The Supreme Court in Life Technologies Corp. v. Promega Corp., 580 U.S. ___ (Feb. 22, 2017) trimmed the scope of infringement liability under 35 U.S.C. § 271(f)(1), which makes it an act of infringement to supply from the United States "all or a substantial portion" of the components of a patented invention for combination abroad. The Court construed the phrase "a substantial portion" in Section 271(f)(1) as having a quantitative, not a qualitative, meaning, requiring the exportation of "plural" components. Therefore, Life Technologies' shipment of a single component from the U.S. for combination with four other components abroad could not constitute infringement of a patent claim covering a five-component kit, even if the single exported component was critical to the invention. On the other hand, the Court declined to say how many components are sufficient for showing a "substantial portion," leaving that determination to lower courts on a case-by-case basis.
The Court distinguished Section 271(f)(1) from Section 271(f)(2), which creates liability for supplying from the U.S. "any component" especially adapted for use in the invention. The latter section, unlike Section 271(f)(1), can in appropriate circumstances be satisfied by the exportation of a single component. However, the single component exported by Life Technologies was a commodity item, which cannot form the basis for infringement under Section 271(f)(2).
Although the Court's decision reduces potential liability for exporters of components, it leaves considerable uncertainty as to which acts of exportation will lead to liability. It is, therefore, important for both manufacturers and patent owners to consult with experienced counsel at the earliest possible time in determining whether there may be an issue of infringement under Section 271(f) or another theory.