2016
Supreme Court To Decide Which Exports Can Trigger Patent Infringement Liability For World–Wide Sales
The Supreme Court term is closing this week with a flurry of long-awaited, contested opinions on abortion, gun control, and government corruption. But intellectual property–minded court–watchers found interest in the Court’s decision to grant cert. (in part) in the case of Life Technologies v. Promega.
While U.S. patent law is generally limited to domestic conduct, actions taken in the United States can have global commercial consequences. In order to discourage businesses from evading the reach of the Patent Act, Congress has, in 35 U.S.C. § 271(f)(1), prohibited exporting “all or a substantial portion of the components of a patented invention” and inducing others to combine those components overseas. Roughly speaking, if you sell a kit of parts that, once assembled, infringes a patent, you can’t avoid liability for patent infringement by teaching people how to assemble the kit outside the United States. Crucially, if found liable, you are on the hook for damages for world–wide sales of the infringing kit/product.
In Life Technologies, the Supreme Court will address the limits of that provision by taking up the question whether an accused infringer can be held liable for patent infringement for exporting only “a single, commodity component of a multi–component invention from the United States.” In other words, can a single, commodity part be “all or a substantial portion of a patented invention?” The Federal Circuit’s affirmative answer is now under Supreme Court scrutiny.
In granting the cert. petition, the Court limited its review to that question, declining to decide whether a single entity can induce itself to infringe a patent. The Federal Circuit’s affirmative answer to that question, therefore, remains good law for now.
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