Life Technologies Corp. v. Promega Corp.
137 S. Ct. 734
| SCOTUS | 2017Background
- Promega owned a patent (Tautz) claiming a five-component genetic-testing kit; Promega sublicensed Life Technologies to manufacture kits for certain law-enforcement uses.
- Life Technologies manufactured four kit components in the U.K. and manufactured the Taq polymerase in the U.S., shipping the Taq to the U.K. to be combined with the other components.
- Promega sued after Life Technologies sold kits outside the licensed field, alleging liability under 35 U.S.C. §271(f)(1) for supplying from the U.S. “all or a substantial portion of the components” for combination abroad.
- A jury found for Promega; the district court granted judgment as a matter of law for Life Technologies, holding §271(f)(1) does not cover a single component. The Federal Circuit reversed, holding a single important component could be a “substantial portion.”
- The Supreme Court granted certiorari to decide whether supplying a single component of a multicomponent invention can trigger §271(f)(1) liability.
Issues
| Issue | Plaintiff's Argument (Promega) | Defendant's Argument (Life Technologies) | Held |
|---|---|---|---|
| Does “substantial portion” in §271(f)(1) mean qualitative importance or quantitative amount? | "Substantial" can mean qualitatively important; a single essential component (Taq) qualifies. | The phrase is quantitative; context ("all" and "portion") points to a quantity threshold greater than one. | Quantitative meaning; "substantial portion" refers to amount, not just importance. |
| Can supplying a single component of a multicomponent invention trigger §271(f)(1) liability? | A single component can if it is sufficiently important or essential to the invention. | No; one component cannot constitute "all or a substantial portion" of components. | No; as a matter of law a single component does not satisfy "all or a substantial portion." |
| How should §271(f)(1) and §271(f)(2) be read together? | (Implicit) §271(f)(1) should reach important single components; §271(f)(2) addresses especially made components. | The provisions are complementary: (f)(1) targets plural "components," (f)(2) covers "any component" specially made/adapted. | (f)(1) addresses plural components; (f)(2) covers a single "especially made or adapted" component. |
| Should courts adopt a case-specific mixed qualitative/quantitative test? | Supports a case-specific or hybrid test considering both number and importance. | Opposes hybrid test as unadministrable and contrary to text. | Rejects hybrid; adopts administrable quantitative rule to avoid ad hoc jury determinations. |
Key Cases Cited
- Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518 (1972) (led Congress to enact §271(f) to reach U.S.-made components assembled abroad)
- Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007) (discussed quantity distinctions between §271(f)(1) and §271(f)(2))
- United States v. Williams, 553 U.S. 285 (2008) (textualist principle: neighboring words inform meaning)
- Hibbs v. Winn, 542 U.S. 88 (2004) (canon favoring interpretations that give meaning to each statutory provision)
- Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754 (2011) (intent standards in patent-law inducement contexts)