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Quantity - Not Quality - Counts for Patent Infringement: More Than One Component of an Invention Must be Supplied for Patent Infringement

March 24, 2017

The U.S. Supreme Court recently held in a recent decision in Life Technologies Corp v. Promega Corp. that the "supply of a single component of a multicomponent invention for manufacture abroad does not give rise to § 271(f)(1) liability."

35 U.S.C. Section 271(f)(1) states that it is an act of infringement to supply from the U.S. "all or a substantial portion of the components of a patented invention" abroad, for combination outside of the United States in a manner that would infringe the U.S. patent if the combination were made in the United States.

Patentee Promega Corp. owns patents covering DNA test kits. It accused defendant Life Technologies Corp. of patent infringement based on its shipment of a single commodity enzyme to a facility in the U.K. that put together the components of the DNA test kits for import into the United States.

The Court of Appeals for the Federal Circuit held that Life Technologies Corp. was liable for patent infringement because shipping a single component was enough to trigger the law, as it was a "sufficiently important" part of the invention.

But the Supreme Court (in an opinion by Justice Sotomayor) unanimously reversed the decision.

The "substantial portion" requirement should be interpreted as a quantitative standard and, "when as in this case a product is made abroad and all components but a single commodity article are supplied from abroad, this activity is outside the scope of the statute."

The bottom line for patent holders: The supply of a single component of a multicomponent invention for manufacture outside of the United States does not give rise to liability under 35 U.S.C. 271(f)(1).

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