Life Technologies v. Promega: “Substantial Portion” as a Quantitative Measure
In Life Technologies v. Promega, 580 U.S. ____ (2017), the Supreme Court held that a single component of a multi-component patented invention cannot be considered “a substantial portion of the components of the patented invention,” for the purposes of patent infringement under 35 U.S.C. § 271(f)(1). This decision overturns the Federal Circuit’s conclusion that “substantial” means “important” or “essential” and that even a single component could be considered a “substantial portion,” under the statute.
Section 271(f)(1) provides that, among other things, a party supplying a “substantial portion of the components of a patented invention” from the United States for combination abroad can be liable for patent infringement.
The patented invention in question was a five-component kit for generating DNA profiles. Plaintiff Promega contended that the Life Technologies supplied one of the components from the United States to its own manufacturing operation abroad. There, Life Technologies combined the component with the remaining components to form the patented kit. Plaintiff Promega contended that this activity made Life Technologies liable for patent infringement under § 271(f)(1).
When analyzing whether this activity gave rise to infringement, the Court first analyzed whether “substantial portion” refers to a quantitative measurement or a qualitative measurement. The Court used canons of statutory interpretation to find that the phrase “substantial portion” has quantitative meaning. In other words, when determining whether components are considered a “substantial portion,” the focus is on the number of components, rather than their relative importance within the patented invention.
In particular, the Court began its analysis by looking at the text of the statute. The Court found that the statute lacked an express definition of the term and that its ordinary meaning can convey both qualitative and quantitative meanings. The Court then looked to the use of the term in the context of the statute, noting that the statute uses the phrase in the context of terms having quantitative definitions, such as “all” and “portion.” The Court further found that the phrase “substantial portion of” is modified by the phrase “components of a patented invention” and that had the phrase been intended to convey a qualitative meaning, the statute would not have included “of components.” Rather, the phrase “substantial portion of” would have been directly modified by “a patented invention.” On this basis the Court found that a quantitative assessment is used when determining whether a “substantial portion of the components of a patented invention” were supplied.
Promega advocated for a case-specific approach that flexibly applied either quantitative or qualitative analysis. The Court distinguished this approach, finding that it would “compound” the ambiguity of the statute and result in juries interpreting the statute on an ad hoc basis. The Court further found that a qualitative approach may merely complicate a factfinder’s review because few inventions would function if missing any one of their components. The Court further noted that Promega did not identify any component of the patented kit that would not be qualitatively important.
In view of the foregoing, the Court found that a quantitative interpretation “hews most closely to the text of the statute and provides an administrable construction.” The Supreme Court next determined whether a single component can be considered a “substantial portion.” Analyzing this question in view of the rest of the statute, the Court determined that a single component cannot be considered a “substantial portion.”
The Court began by looking at the text of the statute and found that “specifying a substantial portion of “components,” plural, indicates that multiple components constitute the substantial portion.” The Court further found that this reading is consistent with § 271(f)(2), which is a “companion provision” to § 271(f)(1). In particular, the Court found that the reading gave each subsection its own unique application.
The court ultimately held that the phrase “substantial portion” has a quantitative meaning and that the subsection of the statute does not cover supplying a single component of a multicomponent invention.
In making this determination, however, the Court declined to define what number of components would constitute a substantial portion. This was further highlighted in the concurrence by Justice Alito and Justice Thomas, which emphasized that they read the opinion to establish that “more than one component is necessary” without addressing “how much more.”
Future cases will likely determine just how many components rise to the level of a substantial portion.
Authored by Christopher P. Ziolkowski