A majority of a patent’s components must be manufactured in the United States for there to be an infringement under §217(f)(1)
Life Technologies Corporation et al., v. Promega Corporation
Promega owns the patent to Tautz, a toolkit for genetic testing. They licensed this patent to Life Technologies Corporation for the use and sale of related products in specific law enforcement fields worldwide. Promega sued under §271(f)(1) of the Patent Act for which the jury found for Promega, but then the District Court granted Life Technologies’ motion for judgment as a matter of law, the federal court then reversed, and finally the Supreme Court held that “quantitative measurement rather than qualitative measurement is used when determining whether an alleged infringer has supplied a substantial portion of the components of a patented invention for combination abroad, as basis for liability for active inducement of patent infringement,” and that “a single component of a multicomponent invention does not constitute a substantial portion of the components”.
Section 271(f)(1) of the Patent Act says:
“Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.”
Effectively, §271(f)(1) prohibits the combination abroad of all or a substantial portion of the components of a patented invention that was supplied from the United States. Thus, the issue addressed by the Supreme Court in this case was what constitutes as “substantial” in these matters. The Tautz toolkit that Promega licensed to Life Technologies Corporation consisted of five components. One of those five components was manufactured in the United States by Life Technologies Corporation and the remaining four were manufactured in the United Kingdom to where the one manufactured in the United States was shipped for packaging and distribution of the full product.
The issue is whether substantial refers to the fact that only one of the five components were manufactured in the United States, or whether the fact that the one component manufactured in the United States, while only one, was still a substantial part of the entire patent. Thus, does the term “substantial” in the statute refer to a qualitative or quantitative measure?”
Ultimately, the Supreme Court found that a quantitative measure rather than a qualitative measure was the intent of the statute making a single component out of five never enough to meet the requirements of “substantial” as referred to in this section of the Patent Act.
This article is provided for informational purposes only and is not intended as a form of legal advice. If you have any questions on the subject matter of this article, call Roland Tong, at 949-298-6867 or email Mr. Tong at [email protected]. Mr. Tong has been obtaining patent, trademark, copyright, and trade secret protections for his clients since 2001. He has represented a wide range of clients from start-up companies to Fortune 500 companies in a wide range of industries.