{"id":1448,"date":"2017-02-22T10:09:15","date_gmt":"2017-02-22T15:09:15","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1448"},"modified":"2017-02-24T10:13:09","modified_gmt":"2017-02-24T15:13:09","slug":"the-song-says-2-out-of-3-aint-bad-the-supreme-court-says-1-is-not-substantial","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1448","title":{"rendered":"The Song says 2 out of 3 Ain’t Bad; The Supreme Court says 1 is not “substantial”"},"content":{"rendered":"

In Life Technologies Corp. v. Promega Corp.<\/em> [14-1538] (February 22, 2017), the Supreme Court reversed a Federal Circuit decision that supplying a single component of a multi-component invention from the United States is an infringing act under Patent Act section 271(f)(1):<\/p>\n

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.<\/p><\/blockquote>\n

Promega\u2019s U.S. Patent No. RE 37,984, is directed to a toolkit for genetic testing.\u00a0 Life Technology made a competing test kit in the United Kingdom.\u00a0 One of the kit\u2019s five components, an enzyme known as the Taq polymerase, was manufactured by Life Technologies in the United States and then shipped to the United Kingdom, where the four other components were made, for combination there.\u00a0 A jury found for Promega.\u00a0 The district court granted JMOL finding that \u201call or a substantial portion\u201d did not encompass the supply of a single component of a multicomponent invention. The Federal Circuit reversed the district court, holding that a single important component could constitute a \u201csubstantial portion\u201d of the components of an invention under \u00a7271(f)(1) and finding that in this case Taq polymerase was such a component.<\/p>\n

The threshold determination was whether \u00a7271(f )(1)\u2019s requirement of \u201ca substantial portion\u201d of the components of a patented invention refers to a quantita\u00adtive or qualitative measurement.\u00a0 The Supreme Court found that The Patent Act itself does not define the term \u201csubstantial,\u201d and turned to its ordinary meaning, which turned out to be of little help. \u00a0Everyone agreed that the term is ambiguous and, taken in isola\u00adtion, might refer to an important portion or to a large portion.<\/p>\n

The Supreme Court found the context in which \u201csubstantial\u201d appears in the stat\u00adute pointed to a quantitative meaning.\u00a0 The neighboring terms \u00a0\u201call\u201d and \u201cportion\u201d convey a quantitative meaning.\u00a0 The Supreme Court noted that if a qualitative meaning was intended, the statute probably would have been worded differently, referring instead to the invention rather than to the components.<\/p>\n

After determining that the term \u201csubstantial portion\u201d refers to a quantitative measurement, the Court turned to the question of whether a single component can ever constitute a \u201csubstantial portion\u201d so as to trigger liability under \u00a7271(f )(1), and the Court held it could not.<\/p>\n

The Supreme Court reached this result in part by comparison with \u00a7271(f )(2), the Court noting that reading \u00a7271(f )(1) to cover any single component would not only leave little room for \u00a7271(f )(2), but would also undermine \u00a7271(f )(2)\u2019s express reference to a single component \u201cespe\u00adcially made or especially adapted for use in the inven\u00adtion.\u201d<\/p>\n

The Court said it was not defining how close to \u201call\u201d of the compo\u00adnents \u201ca substantial portion\u201d must be, and said it was only holding that one component does not constitute \u201call or a substantial portion\u201d of a multicomponent invention under \u00a7271(f )(1).<\/p>\n","protected":false},"excerpt":{"rendered":"

In Life Technologies Corp. v. Promega Corp. [14-1538] (February 22, 2017), the Supreme Court reversed a Federal Circuit decision that supplying a single component of a multi-component invention from the United States is an infringing act under Patent Act section … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[1],"tags":[],"class_list":["post-1448","post","type-post","status-publish","format-standard","hentry","category-uncategorized"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1448","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1448"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1448\/revisions"}],"predecessor-version":[{"id":1449,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1448\/revisions\/1449"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1448"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1448"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1448"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}