Life Technologies Corp. v. Promega Corp.
Headline: Patent supply ruling limits liability: Court holds sending one U.S.-made part for overseas assembly is not a 'substantial portion,' narrowing infringement claims against companies shipping a single component abroad.
Holding: A single U.S.-made component sent abroad for combination does not qualify as "all or a substantial portion" under the federal patent supply rule, so such supply alone does not create liability under that provision.
- Companies are not liable under the federal patent supply rule for shipping one U.S.-made part abroad.
- Patent owners must show multiple U.S.-supplied components to trigger that specific supply-based liability.
- Special exposure remains for specially made single parts under a separate statutory provision.
Summary
Background
Promega, the exclusive licensee of a genetic-testing kit patent, sued Life Technologies after Life shipped one kit part—the Taq polymerase—made in the United States to its United Kingdom factory. Life made the other four kit parts in the U.K., where the parts were combined and sold outside Promega’s licensed fields. Promega said supplying that single U.S. part triggered liability under the federal law that forbids supplying "all or a substantial portion" of a patented invention’s components from the United States for combination abroad.
Reasoning
The Court asked whether "substantial portion" means a qualitative or a quantitative measure. It concluded the phrase is best read quantitatively because the statute uses words like "all" and "portion" that refer to amounts. Reading the text with its companion provision, the Court held that §271(f)(1) targets multiple components supplied from the United States, while a separate rule (§271(f)(2)) can cover a single component that is specially made for the invention. The Court therefore found that one component cannot, as a matter of law, be a "substantial portion."
Real world impact
The Court reversed the Federal Circuit and ordered further proceedings consistent with this ruling. Companies that ship a single commonplace U.S.-made part for assembly overseas will generally face no liability under §271(f)(1). The decision leaves open liability under the different statutory provision for specially made or adapted single components.
Dissents or concurrances
A concurring opinion agreed with the judgment but not all of the Court’s statutory history analysis; it emphasized that the opinion requires more than one supplied component but does not specify how many.
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