On February 22, 2017, the U.S. Supreme Court in Life Technologies Corp. v. Promega Corp. held that if a party provides from the United States just one component of a foreign-manufactured, multicomponent, patent-infringing invention, that party cannot be liable under 35 U.S.C. §271(f)(1).
Life Technologies made or procured in the United States an enzyme that was combined in the United Kingdom with four other components to form a genetic testing kit. Promega sued for patent infringement, alleging Life Technologies was liable for sales of the kit worldwide because Life Technologies had supplied one of the kit’s four components. Promega argued Life Technologies was liable for patent infringement under 35 U.S.C. §271(f)(1), which imposes liability for patent infringement on “[w]hoever without authority supplies. . . in or from the United States all or a substantial portion of the components” of a patent-infringing invention made up of several components that are combined abroad.
The U.S. Supreme Court disagreed with Promega’s argument, holding in an opinion authored by Justice Sotomayor that one component could not equal “a substantial portion of the components” because that phrase required a quantitative—rather than a qualitative—assessment. The Court reached this conclusion based on the context of the “substantial portion of the components” phrase, holding that the words “all” and “portion” imply a quantitative meaning.
Life Technologies settles one issue for manufacturers: They will not violate 35 U.S.C. § 271(f)(1) by supplying one component of a multi-component invention assembled abroad. Exactly how many more than one component is necessary to trigger 35 U.S.C. §271(f)(1) liability, however, remains unclear.
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