A Single Component is Not a “Substantial Portion” under §271(f)(1)

In Life Technologies, the Supreme Court held that “a single component does not constitute a substantial portion of the components that can give rise to liability under §271(f)(1).” .¹ The disputed patent² claims a toolkit for genetic testing, which includes five components. Life Technologies sublicensed the patent from Promega and manufactured all but one component, the enzyme Taq polymerase, in the United Kingdom. Taq was manufactured in the United States and then shipped to the U.K. to be combined with the other components of the kit. Promega alleged that Life Technologies, by supplying Taq from the U.S. to the U.K. manufacturing facilities, was liable for infringement under §271(f)(1).

The District Court ruled in Life Technologies’ favor, stating that there could be no infringement because Promega’s evidence showed that only one component was supplied from the U.S. ³ The Federal Circuit reversed the District Court, applying the dictionary definition of “substantial” to mean “essential” or “important.” ⁴ The Federal Circuit also based its decision on expert testimony that Taq is the “main” and “major” component of the kits.⁵

The Supreme Court reversed the Federal Circuit, holding that supplying a single component of a multicomponent invention is not an infringing act under §271(f)(1). The threshold determination for the Court was whether the statute’s requirement of “a substantial portion” is meant in a qualitative or quantitative sense. The Supreme Court found that a quantitative meaning should be applied, based on the context of the word “substantial” in the statute. ⁶ The Court also declined Promega’s request to adopt a “case-specific approach” to determine whether a quantitative or qualitative interpretation should be used, because such an approach would compound the ambiguity rather than resolve it.⁷

The Supreme Court also considered companion statute §271(f)(2), which states that “any component of a patented invention that is especially made or especially adapted for use in the invention” cannot be supplied from the U.S. for combination abroad. The Court interpreted §271(f)(1) to cover “components” (plural) and of §271(f)(2) to cover “any component” (singular), and thus the single Taq component in the dispute cannot constitute a “substantial portion” of the kit. ⁸