The Supreme Court issued its second intellectual property decision of the present term in Life Technologies Corporation v. Promega Corporation on Feb. 22, 2017. The decision concerned a special provision of the patent infringement statute that defines the acts that constitute patent infringement. This provision prevents an accused infringer from manufacturing the unassembled components of patented invention and shipping those components to another country for assembly overseas.
This special form of infringement was added to the general patent infringement statute, 35 U.S.C. § 271, in response to an earlier Supreme Court decision, Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518 (1972). In Deepsouth, the Supreme Court held that an accused infringer was not liable for making the unassembled components of a patented shrimp de-veining machine for shipment and assembly abroad.
In response to the Deepsouth decision, the general infringement statute was amended to include the following provision:
[w]hoever 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.
35 U.S.C. § 271(f)(1)
Notice that the provision can apply when an accused infringer supplies all of the components of a patented invention or a substantial portion of the components of a patented invention.
In Life Technologies, the accused infringer was manufacturing a single component of a toolkit for genetic testing for shipment abroad. The parties agreed that this toolkit represented one of five components of a patent invention. The Supreme Court had to determine whether the manufacture of a single component was enough for the accused infringer to be liable for infringement under 35 U.S.C. § 271(f)(1).
The Supreme Court reviewed the text of the statutory provision, as well as a companion provision and the history of the enactment of the provision before concluding that a party must manufacture at least two components of the patented invention before it can be liable under 35 U.S.C. § 271(f)(1).