The US Supreme Court heard oral arguments [transcript, PDF] on Wednesday in Life Technologies v. Promega [SCOTUSblog materials] to decide whether 1) a corporation can be held liable for actively encouraging the assembly of components of a patented invention when the same legal entity both supplies the components from the US and assembles them abroad; and 2) a supplier can be held liable for “providing ‘all or a substantial portion of the components of a patented invention’ from the US when the supplier ships for combination abroad only a single commodity component of a multi-component invention.” The question essentially asks when export of a “substantial portion” of the components of a patented invention for assembly outside the US constitutes a patent infringement under 35 USC § 271(f)(1) [text]. This provision states:

“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.”

In this case, Promega [corporate website] alleges that a key component—en enzyme called Taq polymerase— manufactured in the US was sent by Life Technologies to the UK to be assembled together with other components as part of a DNA kit. All of the other components were manufactured outside the US. Promega granted Life Technologies a license to sell the patented kit only for “activities relating to legal proceedings,” but Life Technologies started selling the kit for unlicensed clinical diagnosis. The district court has ruled that there is no patent infringement because only a single component was exported. The Federal Circuit disagreed [LSIPR report] stating that a single exported component can indeed constitute “substantial portion” of the patented invention. Life Technologies has since been purchased by Thermo Fisher Scientific [corporate website], which can thus be exposed to liability [Boston Business Journal report] depending on the outcome of this case.

The Supreme Court is also yet to rule [JURIST report] on another patent infringement case—SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC [SCOTUSblog materials]— involving the application of the defense of laches [35 USC § 282]. The defense of laches claims essentially that the plaintiff unreasonably delayed in filing suit. In SCA Hygiene, the defendant, who is accused of infringing on a patented adult hygiene product design, is attempting to use the defense of laches despite the plaintiff filing suit within the six-year statute of limitations. The US Court of Appeals for the Federal Circuit, sitting en banc, reversed [opinion, PDF] the lower court’s ruling and found in the defendant’s favor, stating that “[w]e conclude that Congress codified a laches defense … that may bar legal remedies. Accordingly, we have no judicial authority to question the law’s propriety.”