February 22, 2017 – The U.S. Supreme Court issued its decision in Life Technologies v. Promega. The Court unanimously interpreted 35 U.S.C. §271(f)(1) to mean that the supply of a single component of a patented multicomponent invention for manufacture abroad does not give rise to infringement. §271(f)(1) provides for the enforcement of patent rights for components that are made in the U.S. but assembled in foreign countries to form a finished product.
The decision reverses the Federal Circuit’s holding that one component is a “substantial portion” under the statute. The Court looked to the ordinary meaning of law terms, stating that the term “substantial portion” refers to a quantitative meaning, as opposed to a qualitative meaning. The Court found that because the law consistently refers to “components,” for example “all or a substantial portion of the components of a patented invention” where “such components are uncombined,” the term “substantial portion” was intended to mean more than one component. As such, the Court held that a single component would not be considered a “substantial portion” as defined in §271(f)(1).
The Court also pointed to §271(f)(2), which explicitly refers to a specific single “component” as further evidence that the term “components” in §271(f)(1) was intended to mean more than one.
LIFE TECHNOLOGIES v. PROMEGA, No. 14-1538 (U.S. February 22, 2017). Sotomayor, Kennedy, Ginsburg, Breyer, Kagan, Thomas, Alito. Appealed from Fed. Cir. (Judges Prost, Meyer, Chen). (Infringement)