Supreme Court Preview -- Life Technologies Corp. v. Promega Corp.

By Andrew Williams --

On Tuesday, December 6, the Supreme Court will hear oral arguments regarding the interpretation of 35 U.S.C. § 271(f)(1), with the pertinent section highlighted:

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 sole question that will be decided by the Supreme Court in the Life Technologies Corporation v. Promega Corporation case is:

Whether the Federal Circuit erred in holding that supplying a single, commodity component of a multi-component invention from the United States is an infringing act under 35 U.S.C.§ 271(f)(1), exposing the manufacturer to liability for all worldwide sales.

Because the statutory language also concerns "active inducement," and LifeTech supplied the component in question to itself, albeit outside the United States, the petitioner had also posed the question whether a single entity can actively induce itself.  The Court, however, did not take up this issue.  Interestingly, Chief Judge Prost had dissented-in-part from the Federal Circuit opinion, but only to this second issue regarding inducement (see "Promega Corp. v. Life Technologies Corp. (Fed. Cir. 2014)").  As such, her separate comments did not impact the Supreme Court's decision to hear this case.

The technology at issue centers on the existence of "short tandem repeats" ("STR") of DNA in the human genome that can be used create a DNA "fingerprint" unique to an individual.  For example, the sequence ATT (adenine-thymine-thymine) can be differently repeated at a particular location depending on the individual.  While no particular "allele" is sufficient to differentiate one person from all others, the analysis of multiple alleles can be.  Therefore, STR profiling can be used in many fields, such as forensic science.  The various loci can be amplified using the polymerase chain reaction ("PCR") to make detectable amounts of DNA.  It is additionally beneficial to amplify more than one loci simultaneously in a reaction, which is referred to as "multiplexing."  The patented technology concerns multiplexing PCR.

The patent that is at issue in this case is directed to a kit for use in such a multiplexing reaction, which contains (1) a mixture of primers; (2) a polymerizing enzyme such as Taq polymerase; (3) nucleotides; (4) a buffer solution; and (5) control DNA.  LifeTech sells kits with all of these components.  However, only the Taq polymerase is manufactured in the United States, and is subsequently shipped overseas to a facility in the United Kingdom for assembly.  These kits are sold world-wide.  The District Court ruled on summary judgement that LifeTech's sales of its STR kits for uses other than forensic investigations conducted by police officers fell outside of a license field-of-use.  The damages calculation that went to the jury included both U.S. sales under 35 U.S.C. § 271(a) and kits made and sold outside the U.S. under 35 U.S.C. § 271(f)(1).  The District Court subsequently granted LifeTech's JMOL motion, finding that Promega failed to present sufficient evidence to sustain the jury verdict under both of these statutory sections.

In considering the same question that is before the Supreme Court, the Federal Circuit held "that there are circumstances in which a party may be liable under 271(f)(1) for supplying or causing to be supplied a single component for combination outside the United States."  Therefore, the Court concluded that there was substantial evidence for the jury's verdict.  The Federal Circuit took the position that the second reference to "such components" in the statute references "the components of the patented invention," not that which much be supplied.  Therefore, the dictionary definition of "substantial," which is "important" or "essential," and the definition of "portion," which is a "section or quantity within a larger thing; a part of a whole," can include a "single important or essential component . . . ."  Moreover, the Court pointed out that the Dictionary Act, at 1 U.S.C. § 1, instructs that "words importing the plural [can] include the singular."

The Federal Circuit also addressed the previous Supreme Court case interpreting § 271(f)(1):  Microsoft v. AT&T Corp., 550 U.S. 437 (2007).  In that case, the exported product was a "master version" of software for an operating system that was copied and installed outside the United States.  The Supreme Court held that abstract software code was not a "component" as referenced in the statute, and that copies made outside the United States were not "supplied" for the purposes of the infringement analysis under this section.  The Federal Circuit pointed out that the Supreme Court was actually considering the export of a single "component" -- the master version.  And, even though the Court held that such a master version was not a § 271(f)(1) component, it did not make any pronouncement that a single component could not satisfy this statutory section.  In fact, the Federal Circuit went as far as to say that the Court could have found, or otherwise instructed, that infringement under this section requires more than one component.  But the Supreme Court did not.  Therefore, the Federal Circuit rested on its ordinary reading of the statute.

Before the Supreme Court on Tuesday, LifeTech is arguing that "a substantial portion of the components" cannot be satisfied by a single component.  In making its argument, LifeTech also looked to the plain text, but focused on the proximity of the phrase "substantial portion" to the term "all," which necessitates a quantitative meaning.  In other words, the argument goes, the statute is referring to the number of components supplied, not their subjective importance.  Moreover, because § 271(f)(2) refers to infringement for exporting a single U.S. component that is especially made or adapted for infringement, subsection (1) must refer exclusively to multi-component infringement.  LifeTech also pointed out that the Microsoft case warned against giving "§271(f) an expansive interpretation," because the presumption should be that United States patent law "governs domestically but does not rule the world."  Finally, LifeTech pointed out that 271(f)(1) was enacted in response to the Supreme Court's decision in Deepsouth Packing Co. v. Laitram Corp., and was intended to prevent the circumvention of U.S. patent law by supplying disassembled parts, leaving only the trivial step of assembly outside of the borders.  Because the Federal Circuit's interpretation would go beyond that goal, LifeTech asserted that the decision should be reversed.

Promega is arguing that the Federal Circuit was correct in its interpretation of the statute.  First, Promega asserted that there is nothing in the statute that suggests that a single component cannot be very important to the overall invention.  Therefore, the analysis should be both a quantitative and qualitative one, where consideration is given to both amount and importance.  Promega characterized LifeTech's proffered interpretation as "a rigid, bright-line rule," likely in view of the Supreme Court's disdain for such rules.  It also focused on the legislative history, but noted that Congress was more concerned was preventing U.S. manufacturers from evading U.S. patent law, and therefore was more focused on the "intent" of the infringer more than the quantity of components.  Moreover, there is no danger of "unduly expansive liability for innocent U.S. suppliers of commodity components," because there is still "specific intent required to establish active inducement."  Finally, Promega pointed out that the Microsoft case was inapposite because in that case, a "U.S. made-master was never actually used in an infringing device."  In contrast, according to Promega, every kit in the present case is "powered" by a Taq polymerase made in the U.S.  This case does not implicate the presumption against extraterritoriality, Promega asserted, because the conduct occurs here in the U.S.

Not surprisingly, there was amicus interest in this case, with positions on both sides of the issue.  The United States government filed an amicus brief in support of petitioner LifeTech, as did the company Agilent Technologies, the Federation of German Industries (known as Bundesverband der Deutschen Industrie e.V.), and a collection of Intellectual Property Professors (although only five such professors attached their names to the brief).  In contrast, the Wisconsin Alumni Research Foundation and the New York Intellectual Property Law Association filed amicus briefs in support of Promega.  Finally, two intellectual property organizations, the IPO and the AIPLA, filed amicus briefs in support of neither party.  Nevertheless, both of these organizations argued that the statute should be interpreted to allow a single component to result in liability under 271(f)(1).  Therefore, even though these organizations did not support Promega, the outcomes they both advocated would benefit the respondent.

We will continue to report on this case as the Supreme Court considers the issue.

Comments

[EG]

Hey Andrew,

Given that the Federal Circuit ruled in favor of the patent owner, it's almost a given that SCOTUS will reverse. But given what transpired during the oral argument, I wouldn't hold my breath on SCOTUS providing any meaningful definition/guidelines on what "all or a substantial portion" means in 271(f)(2). Given that SCOTUS cowardly "punted" on what "article of manufacture" means in the Apple v. Samsung, they could do the same in Life Tech v. Promega.

[skeptical]

One has to wonder what exactly frightens the Supreme Court as to having brightline rules in place for patent law.

[EG]

Hey Andrew,

My apologies, I should have said "271(f)(1)," not "271(f)(2)." That SCOTUS is more than likely to come out with a wishy-washy view of what "all or a substantial portion" won't surprise. SCOTUS proved in Microsoft v. AT&T that they don't understand the language in either subsection of 271(f) because they're unwilling, unlike the Federal Circuit in Waymark that interpreted the language of 271(f) correctly, to loosen their Olympic grip on the dead hand of Deepsouth Packing.