Life Technologies Corp. v. Promega Corp.

Life Technologies v. Promega, decided February 22nd, 2017. By a vote of seven to nothing — the Chief Justice taking no part — in an opinion by Justice Sotomayor, the Supreme Court reversed the Federal Circuit and held that supplying a single component of a multicomponent invention from the United States for combination abroad does not create liability under section 271(f)(1). The phrase "a substantial portion of the components" is quantitative, and one component is not enough. Here's the brief.

The Tautz patent claims a five-component toolkit for genetic testing — a kit used to amplify DNA for forensic identification and research. Its five components are a mixture of primers, nucleotides, a buffer solution, control DNA, and an enzyme called Taq polymerase.

Promega Corporation was the exclusive licensee of the Tautz patent. It sublicensed the patent to Life Technologies, which manufactured the kits. Life Technologies made four of the five components in the United Kingdom and assembled the kits there. Only one component — the Taq polymerase — it manufactured in the United States, then shipped to its U.K. facility for combination with the rest.

When Life Technologies sold the kits outside the licensed fields of use, Promega sued, alleging that supplying the Taq polymerase from the United States triggered liability under section 271(f)(1). A jury found willful infringement. The District Court granted judgment as a matter of law, holding that "a substantial portion" does not reach a single component. The Federal Circuit reversed, ruling that one important component — here, the Taq polymerase — could be a substantial portion. The Court granted cert.

The question was whether supplying a single component of a multicomponent invention is an infringing act under section 271(f)(1).

Section 271(f)(1) imposes liability on whoever supplies from the United States all or a substantial portion of the components of a patented invention for combination abroad. The dispute turned on two words: "substantial portion." Was that measure qualitative — reaching a single component important enough to the invention — or quantitative, requiring some number of the components? The Court acknowledged that "substantial," in isolation, can mean either qualitatively important or quantitatively large, so it looked to the statute's context, structure, and history to decide which meaning Congress intended.

The Court held that "substantial portion" is quantitative. Its neighboring terms — "all" and "portion" — both convey quantity, and nothing in the surrounding text supports a qualitative reading. A qualitative reading, the Court added, would render the phrase "of the components" unnecessary the first time it appears. Only the quantitative approach gives meaning to each part of the provision, and it avoids tasking juries across the country with weighing the relative importance of components case by case.

The Court then held that, under a quantitative approach, a single component can never be a substantial portion. Section 271(f)(1) consistently uses the plural — "components" — indicating that multiple components make up the substantial portion. Structure confirmed it: the companion provision, section 271(f)(2), reaches "any component," singular, that is especially made or adapted for the invention. Reading 271(f)(1) to cover a single component would leave little room for 271(f)(2) and undermine its text. And the history of section 271(f), enacted in response to Deepsouth Packing, pointed the same way.

The Court expressly declined to decide how close to "all" a substantial portion must be — only that one component is not enough. Justice Alito, joined by Justice Thomas, concurred in part and in the judgment. He joined all but the Court's history discussion, and wrote separately to stress that while one component is insufficient, the Court had not held that any number greater than one would suffice.

Life Technologies narrows the extraterritorial reach of the Patent Act's component-export provisions. It establishes that section 271(f)(1) requires the supply of multiple components — a quantitative substantial portion — and that a single component, however important, falls outside it. Liability for a lone component runs instead through section 271(f)(2), and only for a specially adapted, non-commodity part. Read alongside WesternGeco, decided the next year, the two cases map the boundaries of section 271(f): what component supply counts as domestic infringement, and what damages that infringement can support.

Life Technologies Corp. v. Promega Corp., 580 U.S. 140, decided February 22nd, 2017. I'm John Goodhue. Thanks for watching.