Life Techs. Corp. v. Promega Corp.

February 22, 2017

Supreme Court No. 14-1538

Author: Michael Tobin

At district court, Promega sued Life Technologies Corporation et al. (“Life Tech”) for direct infringement under 35 U.S.C. § 271(a) and inducing infringement under 35 U.S.C. § 271(f)(1) of five patents related to copying of sequences of a DNA strand.  Promega Corp. v. Life Techs. Corp., No. 10-CV-281-BBC, 2012 WL 12862829 (W.D. Wis. Sept. 13, 2012).  Since four of the patents owned by Promega were found invalid, only U.S. Reissue Patent No. RE 37,984 (“Tautz patent”), to which Promega was an exclusive licensee, was at issue.  The Tautz patent is directed to a kit for analyzing polymorphism in at least one locus in a DNA sample including at least five components.  One of the kit’s five components, an enzyme known as the Taq polymerase, was manufactured by Life Tech in the United States and then shipped to the United Kingdom, where the four other components were made, for combination there.  At the conclusion of trial, a jury found in favor of Promega regarding infringement of the Tautz patent and awarded more than $50M in damages.  However, the district court vacated this award, finding that infringement could not be found as a matter of law under either § 271(a) or 271(f)(1).

On appeal, the Federal Circuit agreed that there was not sufficient evidence for direct infringement under § 271(a), but reversed the district court’s decision regarding infringement under § 271(f)(1) and reinstated the jury award of damages.  Promega Corp. v. Life Techs. Corp., 773 F.3d 1338 (Fed. Cir. 2014).  Section 271(f)(1) states:

Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

The Federal Circuit found that 1) § 271(f)(1) does not require a third party (Life Tech both supplied Taq polymerase to the UK and combined with the other components of the Tautz patent abroad), 2) “substantial” means “important” or “essential” and 3) “portion” means “part of a whole.”  Based on these findings, the court concluded that Taq polymerase must be “a substantial portion” because it is one of the “main” and “major” components of the accused kit, as conceded by Life Tech.

Life Tech appealed to the Supreme Court, which reversed the Federal Circuit’s reinstatement of the jury verdict.  Specifically, although the Supreme Court agreed that a third party is not required for infringement under § 271(f)(1), the Supreme Court disagreed with the Federal Circuit’s qualitative reading of “a substantial portion” and instead held that this term is quantitative in nature.  In arriving at this holding, the Supreme found that “all” and “portion” convey a quantitative meaning and the modifier “of the components” would be rendered meaningless if these terms were given a qualitative meaning.  The Court further stated, “[r]eading § 271(f)(1) to cover any single component would not only leave little room for § 271(f)(2), but would also undermine § 271(f)(2)’s express reference to a single component ‘especially made or especially adapted for use in the invention.’”  Accordingly, the Court concluded that a single component of a multicomponent invention does not constitute “a substantial portion of the components” under § 271(f)(1).