In 2010, Promega sued Life Technologies for infringement of the Tautz patent (as well as four other patents owned by Promega), alleging that Life Technologies had sold kits that were not covered by the license agreement between the parties (the license agreement limited Life Technologies’ use of the patents-in-suit to activities related to legal proceedings, i.e., live forensic investigations conducted by police officers). The parties moved for summary judgment on infringement and invalidity, with the District Court determining that Life Technologies’ sales outside the license agreement’s field of use were infringing. Following trial, the jury returned a verdict of willful infringement. Life Technologies then moved for JMOL and the District Court granted the motion, finding that Promega had failed to present sufficient evidence to sustain a jury verdict under 271(f)(1), and vacated the finding of infringement.
Promega Corporation sublicensed the Tautz patent
Respondent Promega Corporation sublicensed the Tautz patent, which claims a toolkit for genetic testing, to petitioner Life Technologies Corporation and its subsidiaries (collectively Life Technologies) for the manufacture and sale of the kits for use in certain licensed law enforcement fields worldwide. One of the kit’s five components, an enzyme known as the Taq polymerase, was manufactured by Life Technologies in the United States and then shipped to the United Kingdom, where the four other components were made, for combination there. When Life Technologies began selling the kits outside the licensed fields of use, Promega sued, claiming that patent infringement liability was triggered under271(f)(1) of the Patent Act, which prohibits the supply from the United States of “all or a substantial portion of the components of a patented invention” for combination abroad. The jury returned a verdict for Promega, but the District Court granted Life Technologies’ motion for judgment as a matter of law, holding that 271(f)(1)’s phrase “all or a substantial portion” did not encompass the supply of a single component of a multicomponent invention. The Federal Circuit reversed. It determined that a single important component could constitute a “substantial portion” of the components of an invention under271 (f) (1) and found the Taq polymerase to be such a component.
Reversal of District Courts Grant
On appeal, the Federal Circuit reversed the District Court’s grant of JMOL of non-infringement. The panel was divided as to the finding of infringement under 271(f) (1), but the divide centered on another aspect of the statute. With regard to the issue of whether infringement under 271(f)(1) requires that at least two components be supplied from the U.S., the Federal Circuit held “that there are circumstances in which a party may be liable under 271(f)(1) for supplying or causing to be supplied a single component for combination outside the United States,” and “based on the facts of this particular case that substantial evidence supports the jury’s verdict that LifeTech is liable for infringement under 271(f)(1) for shipping the Taq polymerase component of its accused genetic testing kits to its United Kingdom facility.”
The Supreme Court granted certiorari to determine whether a party that supplies a single component of a multicomponent invention for manufacture abroad can be held liable for infringement under 271(f)(1). As the Court pointed out in its opinion, Life Technologies manufactured all but one component of its kits in the United Kingdom — manufacturing Taq polymerase in the United States and then shipping the Taq polymerase to its United Kingdom facility to be combined with the other four components of the kit.
Court Verdict
In answering the threshold inquiry, the Court noted that the Patent Act does not define the term “substantial,” and that the ordinary meaning of the term was of “little help,” since “We agree the term is ambiguous and, taken in isolation, might refer to an important portion or to a large portion.” However, when the Court looked at the context in which the term appears in the statute, that context pointed to a quantitative meaning. In particular, the Court indicated that the terms “all” and “portion” in the statute convey a quantitative meaning. The Court also noted that “there is nothing in the neighboring text to ground a qualitative interpretation.”
The Court declined Promega’s invitation to adopt a “case-specific approach” in which the fact finder would have to decipher whether the components at issue are a “substantial portion” under either a qualitative or quantitative test, stating that “having determined the phrase ‘substantial portion’ is ambiguous, our task is to resolve that ambiguity, not to compound it by tasking juries across the Nation with interpreting the meaning of the statute on an ad hoc basis
Having determined that the term “substantial portion” refers to a quantitative measurement, the Court next turned to the question of whether, as a matter of law, a single component can ever constitute a “substantial portion” so as to trigger liability under271(f)(1). In answering that question in the negative, the Court noted that 271(f) (1) consistently refers to “components” in the plural, stating that “text specifying a substantial portion of ‘components,’ plural, indicates that multiple components constitute the substantial portion.” The Court therefore held that “one component does not constitute ‘all or a substantial portion’ of a multicomponent invention under 271(f) (1),” adding that to resolve the question presented, the Court did not need to define how close to “all” of the components “a substantial portion” must be.
Having found that the phrase “substantial portion” in 271(f)(1) has a quantitative, not a qualitative, meaning, and further, that 271(f)(1) does not cover the supply of a single component of a multicomponent invention, the Court reversed the judgment of the Federal Circuit and remanded the case since only a single component of the patented invention at issue was supplied from the United States.
