Life Technologies Corp. v. Promega Corp.

Life Technologies Corp. v. Promega Corp.
137 S. Ct. 734 (2017)
Authored by Mario Kolev

Statement of Facts: The Tautz patent claims a toolkit for genetic testing. Respondent Promega Corporation (“Promega”) was the exclusive licensee of the Tautz patent. Petition Life Technologies Corporation (“Life Technologies”) manufactured genetic testing kits. The kits are comprised of five components, one of which is Taq polymerase. During the relevant timeframe, Promega sublicensed the Tautz patent to Life Technologies for manufacture and sale to certain law enforcement fields worldwide. Life Technologies manufactured all but one component of the kits in the United Kingdom. It manufactured Taq polymerase in the United States. Following manufacture of Taq polymerase, Life Technologies then shipped the component to the United Kingdom, where it was combined with the other four components. Four years into the agreement between the two parties, Promega sued Life Technologies on the grounds that Life Technologies had infringed the patent by selling the kits outside the licensed fields of use to clinical and research markets. Specifically, Promega alleged that Life Technologies’ supply of the Taq polymerase from the United States to its manufacturing facilities in the United Kingdom triggered liability under § 271(f)(1) of the Patent Act.

Procedural History: At trial, the jury returned a verdict for Promega, finding that Life Technologies had infringed the patent. Life Technologies then moved for judgment as a matter of law and The District Court for the Western District of Wisconsin (“the District Court”) granted the motion. Promega Corp. v. Life Technologies Corp., 2012 WL 12862829, *3 (WD Wis., Sept. 13, 2012).

The District Court found that the § 271(f)(1)’s phrase “all or a substantial portion” did not encompass the supply of a single component of a multicomponent invention. The Federal Circuit reversed, finding that a single important component could constitute a “substantial portion” under § 271(f)(1) and that Taq polymerase was such a component. Life Technologies appealed to the U.S. Supreme Court.

Questions Presented: 1) Whether the supply of a single component of a multicomponent invention is an infringing act under 35 U. S. C. § 271(f)(1). 2) Whether, as a matter of law, a single component can ever constitute a “substantial portion” so as to trigger liability under § 271(f)(1).

Holdings: 1)No. The supply of a single component of a multicomponent invention for manufacture abroad does not give rise to § 271(f)(1) liability.  2) No. As a matter of law, the supply of a single component cannot constitute a “substantial portion” so as to trigger liability under § 271(f)(1).

Reasoning: In reaching its conclusion, the Court considered the issue of whether § 271(f)(1)’s requirement of a “substantial portion” of the components of a patented invention refers to a quantitative or qualitative measurement. Noting that the Patent Act does not define the term “substantial,” the Court turned to the word’s ordinary meaning. Finding that meaning to be ambiguous, the Court looked to the context in which the word “substantial” appears within the statute. The Court reasoned that the neighboring terms –“all” and “portion”– suggest that “substantial” has a quantitative, rather than a qualitative meaning. The Court reasoned that adopting a qualitative meaning would render certain statutory provisions superfluous – an outcome that is contrary to the canon of statutory interpretation dictating that, whenever possible, the Court should adopt an interpretation that gives meaning to each statutory provision. The Court also rejected Promega’s invitation to adopt a “case-specific approach” that would require the fact-finder to decide whether the components at issue are a “substantial portion” under  either a qualitative or quantitative test. 137 S. Ct. 734, 740. The Court reasoned that because “substantial portion” is ambiguous, adopting Promega’s proposed approach would only compound the ambiguity by tasking juries with interpreting the meaning of a statute on an ad hoc basis.

Having determined that the term “substantial portion” refers to a quantitative measurement, the Court moved to the issue of whether a single component can ever constitute a “substantial portion” so as to trigger liability under § 271(f)(1). The Court again looked to the text of the statute, focusing on the words “of the components.” The Court found that the text specifies a substantial portion of “components,” plural, indicating that a substantial portion includes multiple components. The Court further reasoned that allowing § 271(f)(1) to cover any single component would leave little room for § 271(f)(2), which refers to a single component “. . . especially made or especially adapted for use in the invention.”

In bolstering the rationale for its decision, the Court notes that the history of § 271(f) supports the holding. In particular, the Court notes that Congress enacted the statute in response to Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518 (1972), to fill a gap in the enforceability of patent rights by reaching components that are manufactured in the United States but assembled overseas. Finally, the Court noted that its holding is limited to what is required to resolve the question presented – one component does not constitute “all or a substantial portion” of a multicomponent invention under § 271(f)(1).

Concurring Opinion: Justice Alito, joined by Justice Thomas, concurred in the judgment, but noted that the Court’s opinion does not resolve the question of how much more than one component is necessary to constitute a “substantial portion” under § 271(f)(1).






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