Life Technologies Corp. v. Promega Corp.

A single component is insufficient to constitute a substantial proportion of the components for the purposes of liability under § 271(f)(1) because the phrase holds a quantitative, not qualitative meaning.

Respondent was the exclusive licensee of a patent for the design of a toolkit used in genetic testing. Petitioner was the sublicensee and manufacturer of these genetic toolkits. Petitioner made four of the components in the United Kingdom and the other component was manufactured in the United States. Respondent sued four years into their manufacturing agreement claiming that Petitioner had infringed on the patent by selling outside their proscribed licensing fields, which included clinical and research markets. Respondent claimed that by manufacturing a component in the United States and then having it shipped to the United Kingdom, Petitioner had triggered liability under § 271(f)(1).  A  jury trial returned a verdict for Respondent finding that Petitioner had willfully infringed on the patent. Petitioner then moved for judgment as a matter of law on the grounds that § 271(f)(1) did not apply because the phrase “all or a substantial portion” should not be so broadly construed as to include a single component. The motion was granted and Respondent, subsequently, appealed to the U.S. Court of Appeals for the Federal Circuit where they reversed holding that the jury correctly found that Petitioner had infringed on the patent and that a single component may be “substantial” if it is an “essential” or “important” component. The U.S. Supreme Court granted certiorari, reversed the judgment, and remanded the case for further proceedings consistent with this opinion. The Court determined that a single component is not enough to constitute a substantial proportion of the components for the purposes of liability under § 271(f)(1) because the phrase holds a quantitative and not qualitative meaning. REVERSED and REMANDED.