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Wednesday, 22 February 2017 23:46

SCOTUS Limits Section 271(f)(1) Contributory Infringement for Exporters

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In a drastic reversal, the Supreme Court in Life Tech. v. Promega Corp. decided to limit the scope of infringement under 35 U.S.C. 271(f)(1). 271(f)(1) provides for infringement for exporting "all or a substantial portion of the components of a patented invention". The Court ruled that the "supply of a single component of a multicomponent invention for manufacture abroad does not give rise to 271(f)(1) liability".

The patented invention in this case relates to a kit for performing DNA amplification in vitro. This kit was assembled in the UK, but one of its components (Taq polymerase) was made in the US and shipped to the UK for final assembly. Relying on the statutory language of 271(f)(1), the Court ruled that this exportation of a single component does not rise to the level of infringement.

Writing for the majority, Justice Sotomayor based this decision narrowly on the statutory language of 271(f), contrasting the quantitative recitation in 271(f)(1) vs the recitation in 271(f)(2).

271(f)

(1) 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.

(2) Whoever without authority supplies or causes to be supplied in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial noninfringing use, where such component is uncombined in whole or in part, knowing that such component is so made or adapted and intending that such component will be combined 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.

Specifically, she noted that the "substantial portion" is a quantative requirement, and therefore a single component, as is in this case, is not sufficient. Therefore, the opinion today suggests that a number greater than one may be sufficient, however it does not state how much more.

For the full case and opinion -- https://www.supremecourt.gov/opinions/16pdf/14-1538_p8k0.pdf

Read 1360 times Last modified on Wednesday, 22 February 2017 23:57
Tony Guo

As a specialized technology counsel, Tony supports his clients in the high tech, creative, and online industries. His primary areas of practice include intellectual property protection, Internet law, and startups. Tony is a USPTO registered patent attorney, as well as a licensed lawyer in California and Florida. He comes from a background involving considerable hardware and software development experience, having worked in both development and IT roles in the tech and finance industries.