Today, in Life Technologies Corp. v. Promega Corp., the Supreme Court held that a single component of a patented invention, even if “important,” does not trigger liability for infringement under Section 271(f)(1) of the Patent Act.
Section 271(f)(1) provides:
Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.
The Federal Circuit had ruled that Life Technologies was liable for patent infringement because it shipped a single enzyme to a company in the United Kingdom, where the enzyme was combined with other components into DNA test kits that infringed Promega’s patents. The Federal Circuit determined that a single component can be a “substantial portion” under Section 271(f)(1) if it is a sufficiently important part of the patented invention. The Supreme Court rejected the Federal Circuit’s conclusion.
The Court, taking a textualist approach to statutory interpretation, concluded that “substantial” has a quantitative meaning, not a qualitative one. The statute does not define “substantial,” and its ordinary meaning can be quantitative or qualitative. But neighboring words in the statute, such as “all” and “portion,” point to a quantitative meaning. Additionally, a quantitative meaning maintains Section 271(f)(2)’s separate application. The Federal Circuit’s qualitative interpretation could complicate cases, because most product components are “important,” in that most products will not work if one component is absent. On the other hand, the Court’s “quantitative interpretation hews most closely to the text of the statute and provides an administrable construction.”
While the Supreme Court held that a single component does not constitute a “substantial component,” the Court did not elaborate on how many components would. But market participants now have clearer guidance: “When as in this case a product is made abroad and all components but a single commodity article are supplied from abroad, this activity is outside the scope of the statute.”