On February 22, 2017, in Life Technologies Corporation v Promega Corporation, the Supreme Court of the United States held that the supply of a single component in a multicomponent patented invention for manufacture overseas does not constitute patent infringement.

Section 271 of the US Patent Act prevents the supply from the US of “all or a substantial portion of the components of a patented invention” for manufacture abroad.  The text of section 271 requires that the components “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”. 

Promega had licensed the right to sell and make testing kits for specified law enforcement fields to Life Technologies Corporation (LifeTech); however, Promega sued for infringement because LifeTech was allegedly selling the kit outside the licensed fields.  Portions of the kit were used in the UK where they were combined with an additional component supplied by LifeTech from the U.S. to produce an infringing kit.  LifeTech acknowledged the kit was infringing but argued that as the kit was manufactured in the UK and only used a single component from the US that it was not liable under the US Patent Act.  The Supreme Court agreed and ruled that a single component does not constitute a “substantial portion” under section 271.

Additional commentary is available here.         

E-TIPS® ISSUE

17 03 08