Life Technologies Corporation v. Promega Corporation

Whether the lower court erred in holding that a single entity, when supplying a single commodity component of a multi-component invention, can “actively induce itself to infringe a patent, under 35 U.S.C. § 271(f)(1)?

Petitioner manufactures genetic testing kits that contain at least 5 components. It manufactures one component in the U.S. and ships it overseas, where the remainder of the kit is manufactured and shipped worldwide. Petitioner had a license from Respondent to use the patented technology. Respondent sued Petitioner alleging that it violated 35 U.S.C § 271(f), specifically infringing Respondent’s patent, by selling its kits into unlicensed fields. At trial, the district court overturned a jury verdict for Respondent, granting Petitioner judgment as a matter of law. The court held Respondent did not prove that Petitioner actively induced ”a third party”(as required by § 271) “to combine all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part.” Further, the district court held that Petitioner did not infringe under § 271, because the evidence showed, at most only one component of the patented invention was supplied from the U.S, thus not meeting the “substantial” components requirement of §271. The Federal Circuit Court reversed in a split decision. Petitioner seeks review of the Federal Circuit’s holdings (1) that a single entity can "induce itself” to infringe a patent; and (2) that supplying a single, commodity component of a multi-component invention can be a "substantial portion of the components" of the invention.