One is Never Enough
U.S. Supreme Court Clarifies Patent-Infringement Manufacturing Rule
18 July 2019
One person may be enough to change the world, but shipping one part of a patented invention is never substantial. The U.S. Supreme Court held on February 22, 2017 in Life Technologies Corp. v. Promega Corp. that sending just one component of a patented invention overseas to be assembled—along with other, locally sourced, components—into a patent-infringing whole is never enough to trigger liability under the U.S. patent act. In doing so, the Court reversed the U.S. Court of Appeals for the Federal Circuit, which handles virtually all patent appeals, answered one question, and immediately raised another one.
A bit of background. Promega has a patent on a certain method for testing DNA, useful for law enforcement and academic applications. Life Technologies licensed the patent from Promega for the manufacture and distribution of the patented testing kit in the United Kingdom for law enforcement uses only. Promega ended up suing Life Technologies for patent infringement, alleging that Life Technologies went too far in selling testing kits to the research and academic markets. Cue years of lawsuits.
The main issue at the Supreme Court centered on the definition of "substantial." At least no one said "that depends on what your definition of 'is' is." The Patent Act says supplying or causing to be supplied "all or a substantial portion of the components of a patented invention" from inside the United States to be manufactured outside the United States violates the patentholder's rights. Substantial, of course, is one of those words lawyers love because it can mean many things to many different people and, in the Patent Act, Congress didn't define it. Life Technologies admitted that it shipped one (out of five) components in Promega's testing kit from the United States to the United Kingdom to be assembled into a complete kit there, but argued that wasn't "substantial." The Federal Circuit said "nope, one can make a difference," and upheld a jury verdict against Life Technologies.
The Supreme Court disagreed. In an opinion that reads much more like something from English class than Science class, the Supreme Court held unanimously that the Patent Act's language, while ambiguous, is clear in requiring more than one component of a patented invention be shipped from the United States to trigger liability under the applicable section. Life Technologies and Promega agreed that Life Technologies only shipped one component of the test, so Life Technologies could get on with its life and was not infringing.
That of course, begs the question. So if one component is not enough to infringe, what is? Two? Four? Pi? The Supreme Court's answer is basically "we dunno," with the Justices punting the issue to another day because, in this case, only one component was shipped. Life Technologies wins, Promega loses, and the rest of us are left to say "hmmmmm."
Bottom line: shipping one piece of a patented invention from the U.S. to somewhere outside the U.S. to be assembled into the patented invention is never enough to infringe a patent under the applicable section of the Patent Act. Shipping two? Nobody knows, for now, but the chances of this winding up before the Supreme Court again are probably high. Some patentholder is going to get an infringement verdict against someone for shipping two components, more lawsuits will get filed, and someone will appeal the Supremes. Then, probably, the Justices will have to answer the question they left open this time around. The smart money is that the Supreme Court will create some sort of test to determine what "substantial means" in the context of a specific invention. Until then, one is a-ok, two is dicey, and three, as always, is a party. Remember, one person can change the world but, at least according to the Supreme Court, one component is never "substantial."