Life Technologies Corp., et al. v. Promega Corp.
Issues
Is the shipment of one commodity component from the United States for the foreign assembly and unauthorized sale of a patented, multi-component invention a violation of 35 U.S.C. § 271(f)(1)?
Under 35 U.S.C. § 271(f)(1), when a party, without the authority to do so, ships from the United States either “all or a substantial portion of the components of a patented invention” or “any component . . . that is especially made or especially adapted for use in the invention” in a way that would induce another party abroad to combine the component(s) to form the patented invention, that party commits patent infringement. Section 271(f)(1) prevents parties from evading domestic patent law when engaging in international transactions. The parties differ on how broad § 271(f)(1) should be construed. Life Technologies Corporation argues that courts should construe § 271(f)(1) narrowly to refer to the percentage of components for the invention that a party ships abroad. Promega Corporation, on the other hand, argues that the statute takes into account a combination of quantity and relative importance of the component(s) shipped abroad. The outcome of this case will determine the limits of 35 U.S.C. § 271(f)(1) and, consequently, the limits of private action in shipping materials abroad.
Questions as Framed for the Court by the Parties
35 U.S.C. § 271(f)(1) provides that it is an act of patent infringement to “suppl[y] . . . in or from the United States all or a substantial portion of the components of a patented invention, . . . in such manner as to actively induce the combination of such components outside the United States.” Despite this Court’s clear dictate that section 271(f) should be construed narrowly, Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007), the Federal Circuit held that Life Technologies is liable for patent infringement for worldwide sales of a multi-component kit made abroad because just a single, commodity component of the kit was shipped from the U.S.
The question presented is:
Whether the Federal Circuit erred in holding that supplying a single, commodity component of a multi-component invention from the United States is an infringing act under 35 U.S.C. § 271(f)(1), exposing the manufacturer to liability for all of its worldwide sales.
Promega Corporation (“Promega”) owns four patents for methods of amplifying particular “short tandem repeats” (“STR”) loci in a DNA strand and has an exclusive license over a fifth method for the same. Promega Corp. v. Life Technologies Corp., No. 10-cv-0281, at 5 (Fed. Cir. Dec.
Edited by
Additional Resources
- Angélique McCall, Life Technologies Corp. v. Promega Corp. makes its way to the Supreme Court, IPWatchdog (July 7, 2016).
- Dennis Crouch, Supreme Court to Decide Patent Export Case: Life Tech v. Promega, Patently-O (June 27, 2016).
- Dennis Crouch, Life Tech v. Promega: Inducing with Yourself, Patently-O (Oct. 15, 2015).