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Life Technologies Corp. v. Promega Corp.

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Supreme Court of the United States
Life Technologies Corp. v. Promega Corp.
Reference: 14-1538
Issue: Patent law
Term: 2016
Important Dates
Argument: December 6, 2016
Decided: February 22, 2017
Outcome
Federal Circuit Court of Appeals reversed and remanded
Vote
7-0 to reverse and remand; Roberts recused
Majority
Anthony Kennedy • Clarence Thomas • Ruth Bader Ginsburg • Stephen Breyer • Samuel Alito • Sonia Sotomayor • Elena Kagan
Concurring
Alito (in part and in the judgment), joined by Thomas
Dissenting
None


Life Technologies Corp. v. Promega Corp. is a case argued during the October 2016 term of the U.S. Supreme Court. Argument in the case was held on December 6, 2016. The case came on a writ of certiorari to the United States Court of Appeals for the Federal Circuit. On January 4, 2017, after argument in the case was held, Chief Justice John G. Roberts, through the court clerk, announced that he would recuse himself from the case "after belatedly discovering that his stock holdings had created a possible conflict of interest."[1] On February 22, 2017, the court unanimously reversed and remanded the judgment of the Federal Circuit Court of Appeals.

HIGHLIGHTS
  • The case: Life Technologies Corporation is challenging a Federal Circuit ruling on the scope of patent infringement under a provision of federal law, 35 U.S.C. §271(f)(1).
  • The issue: Does Life Techonologies Corporation meet the standards for patent infringement under 35 U.S.C. §271(f)(1)?
  • The outcome: The court unanimously reversed and remanded the judgment of the Federal Circuit Court of Appeals.


    • In brief: A provision of patent law, 35 U.S.C. §271(f)(1), provides that an entity is guilty of patent infringement when (a) "all or a substantial portion of the components of a patented invention", uncombined, are shipped or caused to be shipped in or from the U.S. and (b) that entity "actively induces" the combination of uncombined components outside of the United States in such a way as to infringe on the patent as if the components were combined in the United States. Life Technologies Corporation (LifeTech) is challenging a Federal Circuit holding that the company, in shipping only one component, has caused "all or a substantial portion of the components of a patented invention" to be combined. Oral argument in the case was held on December 6, 2016. The court issued its opinion on February 22, 2017, with Justice Sonia Sotomayor writing for the court. Justice Samuel Alito wrote an opinion concurring in part and in the judgment, which was joined by Justice Clarence Thomas.


    You can review the Federal Circuit's opinion here.[2]

    Click on the tabs below to learn more about this Supreme Court case.

    Case


    Background

    In 2010, Promega Corporation (Promega) sued Life Technologies Corporation (LifeTech) for infringement of four patents held by Promega and a fifth, called the Tautz patent, for which Promega is the exclusive licensee. The patents relate to methods or kits that are used to examine polymorphism in DNA samples, which is a type of genetic mapping. LifeTech counter-claimed, arguing that the 2006 cross license agreement between Applied Biosystems and Promega allowed LifeTech, as Applied Biosystem's parent company, to practice all of the patents under which Promega alleged infringement. LifeTech also challenged the validity of the four patents wholly owned by Promega. In an oral ruling in federal district court, the court held that LifeTech violated the scope of license agreement in selling kits outside of police forensic work (the only area in which LifeTech was licensed to sell kits) and, through summary judgment, held that LifeTech's sales of these kits violated the Tautz patent. A jury trial was held to assess if LifeTech willfully infringed on Promega's patents and what damages, if any, were owed to Promega.[2]

    Following the close of evidence in the jury trial, the district court asked the jury to address the following question: "[W]hat is the total dollar amount of Defendant's sales of STR kits that were United States sales as that term has been defined for you in the instructions?" The court instructed the jury to consider liability under two provisions of federal patent law, 35 U.S.C. §271(a) and 35 U.S.C. §271(f)(1), "explaining that 'United States sales' included "all kits made, used, offered for sale, sold within the United States or imported into the United States, as well as kits made outside the United States where a substantial portion of the components are supplied from the United States." LifeTech objected to inclusion of the language of 35 U.S.C. §271(f)(1) in the jury instructions. That language reads,[3]

    “

    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. [4]

    		”

    Over LifeTech's objections, a jury found that LifeTech had willfully infringed on Promega's patent and returned damages in excess of $50 million U.S. dollars, an amount the jury believed approximated Promega's lost profits.

    On appeal before the United States Court of Appeals for the Federal Circuit, LifeTech argued that, because only one component was shipped from its U.S. facility to its foreign facility, it could not meet the definition of infringement under § 271(f)(1) which requires "all or a substantial portion of the components of a patented invention" to come in or from the United States. LifeTech referenced a U.S. Supreme Court opinion, Microsoft Corp. v. AT&T Corp. in support of its position, but the circuit court disagreed, arguing that language in the Supreme Court's opinion supported the position that "§ 271(f)(1) may apply when a single 'component' is involved." In so holding, the Federal Circuit held that the "evidence demonstrates that LifeTech supplied a substantial portion of the patented invention ... to its overseas facility as a component of its accused genetic testing kits." The Federal Circuit subsequently reversed the portion of the district court judgment on the § 271(f)(1) infringement claim.[2]

    Petitioners' challenge

    LifeTech challenged the holding of the Federal Circuit that a single component shipped from the United States to its overseas manufacturing facility constitutes a "substantial portion of the components of a patented invention" in violation of 35 U.S.C. §271(f)(1).[5]

    Certiorari granted

    On June 26, 2015, Life Technologies Corp. et al., the petitioners, initiated proceedings in the Supreme Court of the United States in filing a petition for a writ of certiorari to the United States Court of Appeals for the Federal Circuit. The U.S. Supreme Court granted Life Technologies Corp.'s certiorari request on June 27, 2016, limited to question 2 of the petition. Oral argument in the case was held on December 6, 2016.

    Arguments


    Question presented

    Question presented:

    "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."[5]


    Audio

    • Audio of oral argument:[6]



    Transcript

    • Transcript of oral argument:[7]

    Outcome

    Decision

    In a unanimous decision, the Supreme Court reversed and remanded the judgment of the Federal Circuit Court of Appeals. Justice Sonia Sotomayor delivered the opinion of the court. Justice Samuel Alito authored an opinion concurring in part and concurring in the judgment which was joined by Justice Clarence Thomas.[8]

    Opinion

    Justice Sonia Sotomayor delivered the opinion for a unanimous, seven-member court, as Chief Justice John G. Roberts recused himself after argument was held in the case due to a conflict of interest. In her opinion for the court, Justice Sotomayor identified the question before the court as whether the supply of a single component of a multicomponent invention was a patent infringing act under 35 U.S.C. §271(f)(1). That provision of federal law stipulates that,[9]

    “

    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. [4]

    		”

    In the court's view, the threshold question was whether a substantial portion of the components of a patented, multicomponent invention spoke to the number of components or to the relative importance of any one particular component. In examining the context of the statutory text, Justice Sotomayor concluded that the use of the term substantial in §271(f)(1) referred solely to the number of components. In light of this interpretation, the court further held that a single component could never constitute a substantial portion of a patented, multicomponent invention so as to trigger liability under §271(f)(1).

    Based on this interpretation, the court reversed and remanded the judgment of the Federal Circuit Court of Appeals.[8]

    Concurring opinions

    Justice Samuel Alito, joined by Justice Clarence Thomas, authored a brief opinion concurring in part and concurring in the judgment. Justice Alito's opinion in presented in its entirety here:[8]

    “

    I join all but Part II–C of the Court’s opinion. It is clear from the text of 35 U. S. C. §271(f) that Congress intended not only to fill the gap created by Deepsouth Packing Co. v. Laitram Corp., 406 U. S. 518 (1972)—where all of the components of the invention were manufactured in the United States, id., at 524—but to go at least a little further. How much further is the question in this case, and the genesis of §271(f) sheds no light on that question.
    I note, in addition, that while the Court holds that a single component cannot constitute a substantial portion of an invention’s components for §271(f)(1) purposes, I do not read the opinion to suggest that any number greater than one is sufficient. In other words, today’s opinion establishes that more than one component is necessary, but does not address how much more. [4]

    		”

    Dissenting opinions

    There were no dissenting opinions filed.

    The opinion

    Filings

    The court granted Life Technologies Corp.'s certiorari request on June 27, 2016.

    Merits filings

    Parties' filings

    • Life Technologies Corp. et al., the petitioners, filed a merits brief on September 1, 2016.
    • Promega Corporation, the respondent, filed a merits brief on October 24, 2016.
    • Life Technologies Corp. et al. filed a reply brief on the merits on November 22, 2016.

    Amicus curiae filings

    The following groups filed amicus curiae briefs in support of the petitioners, Life Technologies Corp. et al.

    • Brief of Agilent Technologies, Inc.
    • Brief of Bundesverband der Deutschen Industrie e.V. et al.
    • Brief of various intellectual property law professors
    • Brief of the United States of America


    The following groups filed amicus curiae briefs in support of the respondent, Promega Corporation.

    • Brief of the New York Intellectual Property Law Association
    • Brief of the Wisconsin Alumni Research Foundation


    The following groups filed amicus curiae briefs in support of neither party.

    • Brief of the American Intellectual Property Law Association
    • Brief of the Intellectual Property Owners Association

    Certiorari filings

    Parties' filings

    • Life Technologies Corp. et al., the petitioners, filed a petition for certiorari on June 26, 2015.

    Amicus curiae filings

    The following groups filed amicus curiae briefs in support of granting certiorari.

    • Brief of Agilent Technologies, Inc.
    • Brief of Professor Timothy Holbrook
    • Brief of the United States of America

    See also

    Footnotes

    1. ↑ Bloomberg Politics, "Roberts belatedly sees conflict, withdraws in top court case," January 4, 2017
    2. ↑ 2.0 2.1 2.2 U.S. Court of Appeals for the Federal Circuit, Promega Corp. et al. v. Life Technologies Corp., December 15, 2014
    3. ↑ Cornell University's Legal Information Institute, "35 U.S. Code § 271 - Infringement of patent," accessed September 26, 2016
    4. ↑ 4.0 4.1 4.2 Note: This text is quoted verbatim from the original source. Any inconsistencies are attributable to the original source.
    5. ↑ 5.0 5.1 Supreme Court of the United States, Czyzewski v. Jevic Holding Corp., June 28, 2016
    6. ↑ Supreme Court of the United States, Life Technologies Corp. v. Promega Corp., argued December 7, 2016
    7. ↑ Supreme Court of the United States, Life Technologies Corp. v. Promega Corp., argued December 6, 2016
    8. ↑ 8.0 8.1 8.2 Supreme Court of the United States Life Technologies Corp. v. Promega Corp., decided February 22, 2017
    9. ↑ Cornell University's Legal Information Institute, "35 U.S. Code § 271 - Infringement of patent," accessed February 23, 2017
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