Gov't Urges Sup. Ct. Review of LifeTech Infringement Case

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By Tony Dutra

May 13 — The government May 11 urged the U.S. Supreme Court to review how alleged patent infringers can escape liability by performing certain operations overseas.

The U.S. Office of the Solicitor General's brief supported Life Technologies Corp.'s view that it is not liable for inducing infringement by a U.K. affiliate when it ships one component for assembly in a five-component kit.

LifeTech is challenging a split decision by the U.S. Court of Appeals for the Federal Circuit that the one component can be a “substantial portion” of the invention, making it liable for inducing infringement of Promega Corp.'s patents on a DNA identification kit.

The Supreme Court asked the solicitor general for its views in October (193 PTD, 10/6/15).

A second question in the case relates to whether the affiliation between the U.S. and U.K. entities matters to the inducement analysis. The government did not support review of that question, but that shouldn't affect LifeTech's chances if the court agrees with its advice on the first question.

The high court is generally more likely to grant a petition for review when the solicitor general supports it. A 2009 study showed that the court followed that office's recommendations in about 80 percent of the cases.

It's About Components, Not Invention

Under 35 U.S.C. §271(f)(1), a company can infringe a patent by supplying “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.”

Source Material:

Case below:773 F.3d 1338 (Fed. Cir. 2014)

Documents (No. 14-1538):Petition 6/26/15Response 8/26/15Reply 9/9/15Amicus briefs 7/29/15- Agilent- HolbrookSG brief 5/11/16

U.S. Patents:No. 5,843,660No. 6,221,598No. 6,479,235No. 7,008,771No. RE 37,984

LifeTech exported just one component, the Taq polymerase, of the five-component kit.

The Federal Circuit held, 2-1, that what LifeTech supplied was, nevertheless, “substantial.”Promega Corp. v. Life Techs. Corp., 773 F.3d 1338, 113 U.S.P.Q.2d 1181 (Fed. Cir. 2014) (241 PTD 12/16/14).

The government's brief said that was incorrect, and “it subjects domestic exporters to the threat of liability for supplying a single staple article into the global stream of commerce.” Promega did not dispute in this case that the Taq polymerase was a staple article—that is, an item with non-infringing and infringing uses.

The government faulted the appeals court for applying the term “substantial portion” to the “invention” rather than to the “components” of the invention. The single component LifeTech exported might be a substantial portion of the invention, the solicitor general said, but not of the components.

Section 271(f)(2) provides the only circumstance where a single component can raise a question of liability, the brief stated. And that requires that the component be “especially made or especially adapted for use in the invention.” Again, that was not the case here.

No Support for Other Question

However, the solicitor general rejected LifeTech's second concern. The company's U.K. assembler was a related firm, LifeTech argued, and Federal Circuit Chief Judge Sharon Prost in dissent agreed that it couldn't “induce itself.”

Both the district court and the Federal Circuit avoided the fact that the LifeTech U.S. and U.K. firms were distinct legal entities, the government's brief said. On that basis alone, it said, the court should not review this question.

The petitioner did not ask whether one firm can induce an “affiliated corporate entity” to infringe, the brief said, and there are only three cases in the 32 years of Section 271(f)'s existence where the domestic and overseas entities were the same.

Even if they were, the government said, the company's intent would no doubt be “an end-run around United States patent laws.” The Federal Circuit was, then, correct to reject LifeTech's argument on those grounds.

Agilent Technologies Inc. and Professor Timothy R. Holbrook of Emory University, Atlanta, filed amicus briefs supporting LifeTech's position. Holbrook's brief was particularly critical of the Federal Circuit's predilection for “the extraterritorial application of U.S. law.”

Sidley Austin LLP filed the petition on behalf of LifeTech. Wilmer Cutler Pickering Hale and Dorr LLP represent Promega.

To contact the reporter on this story: Tony Dutra in Washington at

To contact the editor responsible for this story: Mike Wilczek in Washington at

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