Life Technologies Corp. v. Promega Corp.
The Supreme Court ruled that shipping just one component of a multi-part patented invention overseas for final assembly does not trigger patent infringement liability under federal patent law.
The decision narrows a federal appeals court's broader reading of the law, giving companies with international supply chains more certainty about when supplying a single U.S.-made part for overseas assembly can expose them to patent liability.
“We hold only that one component does not constitute “all or a substantial portion” of a multicomponent invention under §271(f )(1).”
The Court's central holding limiting patent infringement liability for single-component exports.
How it got here: A jury sided with Promega, but the trial judge overturned that verdict; the Federal Circuit reversed the judge and reinstated the verdict, prompting Life Technologies to seek Supreme Court review.
The Case in Depth
What happened
Promega Corporation licensed a patented genetic-testing kit technology to Life Technologies Corporation for use in certain law-enforcement markets. Life Technologies made one of the kit's five components, an enzyme called Taq polymerase, in the United States and shipped it to the United Kingdom, where the other four components were made and everything was assembled. When Life Technologies sold kits outside the licensed fields, Promega sued for patent infringement.
The question before the Court
Can a company be held liable for patent infringement just for supplying a single part of a multi-part invention from the U.S. for assembly abroad?
The Court's answer
No — the Court ruled that supplying just one component of a multi-part invention from the United States for assembly overseas is not enough to trigger liability under this patent law provision, even if that one component is important to the invention. The law's phrase "substantial portion" refers to a quantity of parts, not how important a single part is.
Because the statute repeatedly uses the plural word "components" and has a separate provision specifically addressing single specially-made parts, the Court concluded Congress meant for multiple components to be required here. Since Life Technologies supplied only one of the kit's five components from the U.S., that fell short of "all or a substantial portion," so there was no infringement under this provision.
Curious how the Court got there? See the step-by-step legal reasoning →
Why it matters
Manufacturers that build products with parts sourced from multiple countries now have clearer guidance: supplying just one part from the United States for assembly abroad, even an important one, won't by itself create patent infringement liability. This matters for companies with global supply chains in industries like biotechnology, electronics, and pharmaceuticals.
What changes now
The case returns to the lower courts for further proceedings consistent with the Court's ruling that a single component cannot trigger liability under this provision. The decision is final on the legal question presented, though the Court expressly left open exactly how many components are needed to count as a 'substantial portion,' leaving that line-drawing for future cases.
What this does not decide
The Court did not decide how many components beyond one would be enough to count as a 'substantial portion,' nor did it resolve whether the Taq polymerase would trigger liability under the separate provision covering specially-made single components. Those questions remain open for future cases.
Concurrences and dissents
Concurrence in part — Justice Alito
Justice Alito, joined by Justice Thomas, agreed with every part of the majority opinion except its discussion of the statute's history (Part II-C). He argued that Congress clearly meant to go beyond simply fixing the gap identified in an earlier case, but that the statute's background does not answer how far beyond that gap Congress intended to go. He also stressed that the ruling establishes only that more than one component is required, not any specific number.
How the Court got there
The legal reasoning, step by step
- The Court first asked whether the statute's phrase 'a substantial portion' of an invention's components means a large quantity of parts or simply an important part, since the word 'substantial' can carry either meaning in everyday English.
- Looking at the words surrounding 'substantial' in the statute, the Court found that neighboring terms like 'all' and 'portion' both describe amounts, not importance, pointing toward a quantity-based reading rather than an importance-based one.
- The Court also noted that reading 'substantial' to mean 'important' would make the phrase 'of the components' pointless, since a qualitative test would not need to reference the components at all — so only the quantity-based reading gives every word in the statute a purpose.
- Having decided the test is about quantity, the Court examined the statute's repeated use of the plural word 'components' and its structure alongside a companion provision that separately covers a single specially-made component, concluding that Congress meant to treat single-component supply differently from multi-component supply.
- Applying that quantity-based, plural-components reading to the facts, the Court concluded that supplying just one part of a five-part invention, even an important one, cannot amount to 'all or a substantial portion' of the invention's components.
Doctrinal impact
Cases affected by this decision
Distinguishes Deepsouth Packing Co. v. Laitram Corp. (406 U. S. 518)
The Court explains this case exposed a gap in patent law that Congress later filled with the statute at issue, but does not disturb its holding.
Distinguishes Microsoft Corp. v. AT&T Corp. (550 U. S. 437)
The Court clarifies that this earlier decision turned on whether software counted as a component, not on how many components were supplied.