Life Technologies Corporation v. Promega Corporation

137 S.Ct. 734 (2017))

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Nature of the Case

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Facts

Promega's (P) patent claims a toolkit for genetic testing. The kit is used to take small samples of genetic material and then synthesize multiple copies of a particular nucleotide sequence. This process of copying, known as amplification, generates DNA profiles that can be used by law enforcement agencies for forensic identification and by clinical and research institutions around the world. The kit contains five components: (1) a mixture of primers that mark the part of the DNA strand to be copied; (2) nucleotides for forming replicated strands of DNA; (3) an enzyme known as Taq polymerase; (4) a buffer solution for the amplification; and (5) control DNA. P is the exclusive licensee of the patent. Life Technologies Corporation (D) manufactures genetic testing kits. P sublicensed D for the manufacture and sale of the kits for use in certain licensed law enforcement fields worldwide. D manufactured all but one component of the kits in the United Kingdom. It manufactured that component-the Taq polymerase-in the United States. D shipped the Taq polymerase to its United Kingdom facility, where it was combined with the other four components of the kit. P sued D on the grounds that D had infringed the patent by selling the kits outside the licensed fields of use to clinical and research markets. P alleged that the supply of the Taq polymerase from the United States to the United Kingdom manufacturing facilities triggered liability under §271(f)(1). Section 271(f)(1)’s full text reads: “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 jury found that D had willfully infringed the patent. D moved for judgment as a matter of law, contending that §271(f)(1) did not apply to its conduct because the phrase “all or a substantial portion” does not encompass the supply of a single component of a multicomponent invention. The District Court granted D's motion. The Court of Appeals reversed and reinstated the jury’s verdict.