Supply of single component for manufacture overseas does not constitute patent infringement

Promega is the exclusive licensee of a patent about a process for examining genetic differences between people in DNA samples, referred to in court documents as the "Tautz patent". Promega had sold a license to Life Technologies under ThermoFisher Scientific [corporate websites] to make and sell the testing kits for specified law enforcement fields but sued [Bloomberg report] claiming that Life Technologies was selling the kit outside the licensed fields.The Court in it's opinion therefore ruled that the supply of a single components does not constitute a "substantial portion". The kits are sometimes used by police for forensic identification, and by researchers for the analysis of cancer cells. Wisconsin-based Promega Corp. sued, arguing that the kits infringed a US patent.

The U.S. Supreme Court delivered relief to anxious chemicals manufacturers and other commodity producers today when it reversed a patent court decision that held a company liable for exporting a commonly used laboratory chemical that it combined into a patented product overseas.

The federal appeals specializing in patent cases reversed and reinstated the verdict. The law forbids supplying a "substantial portion of the components" from the USA for this objective. Infringement does not occur as the manufacture takes place in the United Kingdom, however, under Section 271 of the Patent Act, LifeTech can be liable under infringement for their supply of the components.

The Supreme Court on Wednesday sided with California-based Life Technologies a patent infringement case that limits the worldwide reach of US patent laws. The accused infringement was shipping one component of the kit (Taq polymerase) to the United Kingdom for combination with the other components. "We are persuaded, however, that when as in this case a product is made overseas and all components but a single commodity article are supplied from overseas, this activity is outside the scope of the statute".

"A qualitative reading would render the phrase "of the components" unnecessary the first time it is used in §271 (f )(1)". Chief Justice John Roberts heard arguments in the case, but later withdrew after discovering he owned shares in the parent company of Life Technologies.

  • Zachary Reyes