The Supreme Court held that supplying a single component for the manufacture of a multicomponent outside the U.S., that is, abroad, does not give rise to patent infringement under 35 U.S.C. §271(f)(1). Life Technologies Corporation v. Promega Corporation, 2017 U.S. LEXIS 1428, No. 14-1538 (February 22, 2017)(Available Here).
Promega Corporation (“Promega”) had sublicensed a patent for a toolkit for genetic testing to Life Technologies Corporation (“Life Tech”) for the manufacture and sale of kits for use in certain law enforcement fields worldwide. One component of the kit was made in the United States and shipped to United Kingdom where the four other components were made and combined in to the final genetic toolkit. When Life Tech began selling the kits outside the licensed fields of use, Promega sued for patent infringement under §271(f)(1), which prohibits the supply from the United States of “all or a substantial portion of the components of a patented invention” for combinations made abroad.
The threshold determination to be made was whether §271(f)(1)’s requirement of “a substantial portion” of the components of a patented invention refers to a quantitative or qualitative measurement or analysis of the component. The Court first found that Section 271(f)(1)’s phrase “substantial portion” refers to a quantitative measurement. The statutory context points to a quantitative meaning. Neighboring words in the Patent Act “all” and “portion” convey a quantitative meaning, and nothing in the neighboring text points to a qualitative interpretation.
Next, the Court found that under a quantitative approach, a single component cannot constitute a “substantial portion” triggering §271(f)(1) liability. Section 271(f)(1) consistently refers to the plural “components,” indicating that multiple components make up the substantial portion.
Finally, the Court found that the history of §271(f) further bolstered their conclusion. Congress enacted §271(f) to fill a gap in the enforceability of patent rights by reaching components that are manufactured in the United States but assembled overseas. “Consistent with Congress’s intent, a supplier may be liable under §271(f)(1) for supplying from the United States all or a substantial portion of the components of the invention or under §271(f)(2) for supplying a single component if it is especially made or especially adapted for use in the invention and not a staple article or commodity.” “But, as here, when a product is made abroad and all components but a single commodity article are supplied from abroad, the activity is outside the statute’s scope.”