The Song says 2 out of 3 Ain’t Bad; The Supreme Court says 1 is not “substantial”

In Life Technologies Corp. v. Promega Corp. [14-1538] (February 22, 2017), the Supreme Court reversed a Federal Circuit decision that supplying a single component of a multi-component invention from the United States is an infringing act under Patent Act section 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."

Promega’s U.S. Patent No. RE 37,984, is directed to a toolkit for genetic testing.  Life Technology made a competing test kit in the United Kingdom.  One of the kit’s five components, an enzyme known as the Taq polymerase, was manufactured by Life Technologies in the United States and then shipped to the United Kingdom, where the four other components were made, for combination there.  A jury found for Promega.  The district court granted JMOL, finding that “all or a substantial portion” did not encompass the supply of a single component of a multicomponent invention.  The Federal Circuit reversed the district court, holding that a single important component could constitute a “substantial portion” of the components of an invention under §271(f)(1) and finding that in this case Taq polymerase was such a component.

The threshold determination was whether §271(f )(1)’s requirement of “a substantial portion” of the components of a patented invention refers to a quantitative or qualitative measurement.  The Supreme Court found that The Patent Act itself does not define the term “substantial,” and turned to its ordinary meaning, which turned out to be of little help.  Everyone agreed that the term is ambiguous and, taken in isolation, might refer to an important portion or to a large portion.

The Supreme Court found the context in which “substantial” appears in the stat­ute pointed to a quantitative meaning.  The neighboring terms  “all” and “portion” convey a quantitative meaning. The Supreme Court noted that if a qualitative meaning was intended, the statute probably would have been worded differently, referring instead to the invention rather than to the components.

After determining that the term “substantial portion” refers to a quantitative measurement, the Court turned to the question of whether a single component can ever constitute a “substantial portion” so as to trigger liability under §271(f )(1), and the Court held it could not.

The Supreme Court reached this result in part by comparison with §271(f )(2), the Court noting that reading §271(f )(1) to cover any single component would not only leave little room for §271(f )(2), but would also undermine §271(f )(2)’s express reference to a single component “espe­cially made or especially adapted for use in the inven­tion.”

The Court said it was not defining how close to “all” of the compo­nents “a substantial portion” must be, and said it was only holding that one component does not constitute “all or a substantial portion” of a multicomponent invention under §271(f )(1).