Source: Grill IP patents news
On June 27, the US Supreme Court declared that it will look at whether shipping a single non-infringing component from the States would make the supplier of that component liable for international damages under US law, should that component be used in an infringing composition outside the US. This announcement presents a crucial case for manufacturers that provide their products produced in the States to worldwide markets.
At the urging of the Solicitor General and the petitioner, Life Technologies Corporation (LifeTech), the Supreme Court granted certiorari on deciding whether the “Federal Circuit erred in holding that supplying a single, commodity component of a multiple-component invention from the United States is an infringing act under 35 U.S.C. § 271(f)(1), exposing the manufacturer to liability for all worldwide sales.”
The Court will decide if the manufacture and sale of a product outside the US could incur worldwide liability in the States if said product infringes a US patent and contains any component supplied from the States.
The announcement comes on the heels of a protracted infringement battle between two life science companies. LifeTech developed an enzyme in the US that augments DNA for examination, Taq polymerase, and supplied the enzyme to a UK manufacturer. In the UK, Taq polymerase was packaged into a genetic testing kit set on international distribution. Promega sued LifeTech, charging the corporation with infringement over the testing kit. The plaintiff argued that the sale of the kit to the US infringed upon its patents under 35 U.S.C. § 271(a), and that LifeTech’s shipment of the enzyme from the US made the defendant liable for damages relating to the sale of the kit overseas under 35 U.S.C. § 271(f)(1). The jury sided with Promega, awarding the plaintiff lost profits from the international sale of LifeTech’s kits. This decision was overturned by the district court, which asserted that § 271(f)(1) refers to the supply of “all or a substantial portion of the components of a patented invention,” and was thus inapplicable to the export of a single US component of the product.
In Promega Corp. v. Life Technologies Corp. the Federal Circuit reversed the District Court’s decision, observing that “LifeTech’s own witness admitted that the Taq polymerase is one of the ‘main’ and ‘major’ components of the accused kits” and “without Taq polymerase, the genetic testing kit recited in the [Promega] patent would be inoperable.” According to the appellate court, the supply of a single component was enough to satisfy § 271(f)(1).
In response, LifeTech petitioned for certiorari on its liability, and the Supreme Court granted consideration following a brief of support from the Solicitor General.
The possibility of infringement liability for scores of US manufacturers, particularly chemical and pharmaceutical companies, is generated by the Federal Circuit’s decision. The shipment of just one non-infringing component from the States to another country is enough for massive damages. Since liability is determined when that component comprises a “substantial portion” of the patented product and the producer induced the assembly of that product, US producers occupy an unclear position. The Federal decision is ambiguous; it forces these producers to guess whether their single component passes that “substantial” threshold and enlarges the territorial scope of US patent law. The Supreme Court’s decision is expected by June of next year, and it should clarify these issues, contributing to some degree of certainty for LifeTech and the like.
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