Life Technologies Corp. v. Promega Corp.
Life Technologies Corp. v. Promega Corp.
Opinion
This case concerns the intersection of international supply chains and federal patent law. Section 271(f)(1) of the Patent Act of 1952 prohibits the supply from the United States of "all or a substantial portion" of the components of a patented invention for combination abroad.
I
A
We begin with an overview of the patent in dispute. Although the science behind *738 the patent is complex, a basic understanding suffices to resolve the question presented by this case.
The Tautz patent, U.S. Reissue Patent No. RE 37,984, claims a toolkit for genetic testing. 1 The kit is used to take small samples of genetic material-in the form of nucleotide sequences that make up the molecule deoxyribonucleic acid (commonly referred to as "DNA")-and then synthesize multiple copies of a particular nucleotide sequence. This process of copying, known as amplification, generates DNA profiles that can be used by law enforcement agencies for forensic identification and by clinical and research institutions around the world. For purposes of this litigation, the parties agree that the kit covered by the Tautz patent contains five components: (1) a mixture of primers that mark the part of the DNA strand to be copied; (2) nucleotides for forming replicated strands of DNA; (3) an enzyme known as Taq polymerase; (4) a buffer solution for the amplification; and (5) control DNA. 2
Respondent Promega Corporation was the exclusive licensee of the Tautz patent. Petitioner Life Technologies Corporation manufactured genetic testing kits. 3 During the timeframe relevant here, Promega sublicensed the Tautz patent to Life Technologies for the manufacture and sale of the kits for use in certain licensed law enforcement fields worldwide. Life Technologies manufactured all but one component of the kits in the United Kingdom. It manufactured that component-the Taq polymerase-in the United States. Life Technologies shipped the Taq polymerase to its United Kingdom facility, where it was combined with the other four components of the kit.
Four years into the agreement, Promega sued Life Technologies on the grounds that Life Technologies had infringed the patent by selling the kits outside the licensed fields of use to clinical and research markets. As relevant here, Promega alleged that Life Technologies' supply of the Taq polymerase from the United States to its United Kingdom manufacturing facilities triggered liability under § 271(f)(1).
B
At trial, the parties disputed the scope of § 271(f)(1)'s prohibition against supplying all or a substantial portion of the components of a patented invention from the United States for combination abroad. Section 271(f)(1)' s full text reads:
"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 . "
*739 The jury returned a verdict for Promega, finding that Life Technologies had willfully infringed the patent. Life Technologies then moved for judgment as a matter of law, contending that § 271(f)(1) did not apply to its conduct because the phrase "all or a substantial portion" does not encompass the supply of a single component of a multicomponent invention.
The District Court granted Life Technologies' motion. The court agreed that there could be no infringement under § 271(f)(1) because Promega's evidence at trial "showed at most that
one
component of all of the accused products, [the
Taq
] polymerase, was supplied from the United States."
The Court of Appeals for the Federal Circuit reversed and reinstated the jury's verdict finding Life Technologies liable for infringement.
4
II
The question before us is whether the supply of a single component of a multicomponent invention is an infringing act under
A
The threshold determination to be made is whether § 271(f)(2)'s requirement of "a substantial portion" of the components of a patented invention refers to a quantitative or qualitative measurement. Life Technologies and the United States argue that the text of § 271(f)(1) establishes a quantitative threshold, and that the threshold must be greater than one. Promega defends the Federal Circuit's reading of the statute, arguing that a "substantial portion" of the components includes a single component if that component is sufficiently important to the invention.
We look first to the text of the statute.
Sebelius v. Cloer,
569 U.S. ----, ----,
The context in which "substantial" appears in the statute, however, points to a quantitative meaning here. Its neighboring terms are the first clue. "[A] word is given more precise content by the neighboring words with which it is associated."
United States v. Williams,
Moreover, the phrase "substantial portion" is modified by "of the components of a patented invention." It is the supply of all or a substantial portion "of the components" of a patented invention that triggers liability for infringement. But if "substantial" has a qualitative meaning, then the more natural way to write the opening clause of the provision would be to not reference "the components" at all. Instead, the opening clause of § 271(f)(1) could have triggered liability for the supply of "all or a substantial portion of ... a patented invention, where [its] components are uncombined in whole or in part." A qualitative reading would render the phrase "of the components" unnecessary the first time it is used in § 271(f)(1). Whenever possible, however, we should favor an interpretation that gives meaning to each statutory provision. See
Hibbs v. Winn,
Promega argues that a quantitative approach is too narrow, and invites the Court to instead adopt a "case-specific approach" that would require a factfinder to decipher whether the components at issue are a "substantial portion" under
either
a qualitative or quantitative test. Brief for Respondent 17, 42. We decline to do so. Having determined the phrase "substantial portion" is ambiguous, our task is to resolve that ambiguity, not to compound it by tasking juries across the Nation with interpreting the meaning of the statute on an ad hoc basis. See,
e.g.,
Robinson v. Shell Oil Co.,
As a more general matter, moreover, we cannot accept Promega's suggestion that the Court adopt a different analytical framework entirely-one that accounts for both the quantitative and qualitative aspects of the components. Promega reads § 271(f)(1) to mean that the answer to whether a given portion of the components is "substantial" depends not only on the number of components involved but also on their qualitative importance to the invention *741 overall. At first blush, there is some appeal to the idea that, in close cases, a subjective analysis of the qualitative importance of a component may help determine whether it is a "substantial portion" of the components of a patent. But, for the reasons discussed above, the statute's structure provides little support for a qualitative interpretation of the term. 5
Nor would considering the qualitative importance of a component necessarily help resolve close cases. To the contrary, it might just as easily complicate the factfinder's review. Surely a great many components of an invention (if not every component) are important. Few inventions, including the one at issue here, would function at all without any one of their components. Indeed, Promega has not identified any component covered by the Tautz patent that would not satisfy Promega's "importance" litmus test. 6 How are courts-or, for that matter, market participants attempting to avoid liability-to determine the relative importance of the components of an invention? Neither Promega nor the Federal Circuit offers an easy way to make this decision. Accordingly, we conclude that a quantitative interpretation hews most closely to the text of the statute and provides an administrable construction.
B
Having determined that the term "substantial portion" refers to a quantitative measurement, we must next decide whether, as a matter of law, a single component can ever constitute a "substantial portion" so as to trigger liability under § 271(f)(1). The answer is no.
As before, we begin with the text of the statute. Section 271(f)(1) consistently refers to "components" in the plural. The section is targeted toward the supply of all or a substantial portion "of the components, " where "such components " are uncombined, in a manner that actively induces the combination of "such components " outside the United States. Text specifying a substantial portion of "components," plural, indicates that multiple components constitute the substantial portion.
The structure of § 271(f) reinforces this reading. Section 271(f)(2), which is § 271(f)(1)'s companion provision, reads as follows:
"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."
Reading § 271(f)(1) to refer to more than one component allows the two provisions *742 to work in tandem. Whereas § 271(f)(1) refers to "components," plural, § 271(f)(2) refers to "any component," singular. And, whereas § 271(f)(1) speaks to whether the components supplied by a party constitute a substantial portion of the components, § 271(f)(2) speaks to whether a party has supplied "any" noncommodity component "especially made or especially adapted for use in the invention."
We do not disagree with the Federal Circuit's observation that the two provisions concern different scenarios. See
Taken alone, § 271(f)(1)'s reference to "components" might plausibly be read to encompass "component" in the singular. See
We do not today define how close to "all" of the components "a substantial portion" must be. We hold only that one component does not constitute "all or a substantial portion" of a multicomponent invention under § 271(f)(1). This is all that is required to resolve the question presented.
C
The history of § 271(f) bolsters our conclusion. The Court has previously observed that Congress enacted § 271(f) in response to our decision in
Deepsouth Packing Co. v. Laitram Corp.,
The effect of this provision was to fill a gap in the enforceability of patent rights by reaching components that are manufactured in the United States but assembled overseas and that were beyond the reach of the statute in its prior formulation. Our ruling today comports with Congress' intent. A supplier may be liable under § 271(f)(1) for supplying from the United States all or a substantial portion of the components (plural) of the invention, even when those components are combined abroad. The same is true even for a single component under § 271(f)(2) if it is especially made or especially adapted for use in the invention and not a staple article or commodity. We are persuaded, however, that when as in this case a product is made abroad and all components but a single commodity article are supplied from abroad, this activity is outside the scope of the statute.
III
We hold that the phrase "substantial portion" in
It is so ordered.
THE CHIEF JUSTICE took no part in the decision of this case.
Justice ALITO, with whom Justice THOMAS joins, concurring in part and concurring in the judgment.
I join all but Part II-C of the Court's opinion. It is clear from the text of
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.
The Tautz patent expired in 2015. The litigation thus concerns past acts of infringement only.
Because the parties here agree that the patented invention is made up of only these five components, we do not consider how to identify the "components" of a patent or whether and how that inquiry relates to the elements of a patent claim.
Applied Biosystems, LLC, and Invitrogen IP Holdings, Inc., are also petitioners in this proceeding and are wholly owned subsidiaries of Life Technologies Corporation. The agreement at issue here was originally between Promega and Applied Biosystems
.
Chief Judge Prost dissented from the majority's conclusion with respect to the "active inducement" element of
The examples Promega provides of other statutes' use of the terms "substantial" or "significant" are inapposite. See Brief for Respondent 19-20. The text of these statutes, which arise in different statutory schemes with diverse purposes and structures, differs in material ways from the text of § 271(f)(1). The Tax Code, for instance, refers to "a substantial portion of a return,"
Life Technologies' expert described the
Taq
polymerase as a "main" component. App. 160. The expert also described two other components the same way.
This Court's opinion in
Microsoft Corp. v. AT & T Corp.,
Promega argues that the important distinction between these provisions is that § 271(f)(1), unlike § 271(f)(2), requires a showing of specific intent for active inducement. Brief for Respondent 34-41. But cf.
Global-Tech Appliances, Inc. v. SEB S.A.,
Reference
- Full Case Name
- LIFE TECHNOLOGIES CORPORATION Et Al., Petitioners v. PROMEGA CORPORATION.
- Cited By
- 32 cases
- Status
- Published