## Facts

- Promega held an exclusive license to a patent claiming a multicomponent genetic-testing kit and sublicensed the patent to Life Technologies for specified law-enforcement fields of use worldwide.
- The accused kit had five components; Life Technologies manufactured one component (Taq polymerase) in the United States and shipped it abroad, where the other components were made and the kit was assembled.
- Promega alleged Life Technologies sold kits outside the sublicensed fields of use and sought damages based on worldwide sales.
- Promega’s infringement theory relied on 35 U.S.C. § 271(f)(1), asserting that supplying Taq polymerase from the United States for foreign combination constituted supplying “all or a substantial portion of the components” of the patented invention.
- A jury found for Promega and awarded damages, but the district court entered JMOL for Life Technologies, concluding § 271(f)(1) does not reach supplying a single component of a multicomponent invention.
- The Federal Circuit reversed, holding one “important” component could be a “substantial portion” under § 271(f)(1).

## Issues

1. Whether “a substantial portion of the components” in 35 U.S.C. § 271(f)(1) is measured quantitatively or can be satisfied by the qualitative importance of a single component.
2. Whether supplying a single component from the United States for foreign assembly can trigger liability under § 271(f)(1).

## Decision

- The Supreme Court reversed the Federal Circuit and remanded.
- The Court held § 271(f)(1)’s “substantial portion” inquiry is quantitative, not a qualitative “importance” test.
- The Court held that supplying a single component of a multicomponent invention from the United States for combination abroad does not satisfy § 271(f)(1).
- The Court rejected using the number of foreign-assembled end products to treat one supplied component as a “substantial portion” of the invention’s components.
- Justice Alito, joined by Justice Thomas, concurred in part and in the judgment, agreeing that one component is insufficient but declining to join a portion of the opinion addressing additional measurement questions.

## Legal Principles

- In § 271(f)(1), “all” and “portion” indicate a quantitative comparison of how many components of the patented invention are supplied from the United States.
- The plural term “components,” read in context, requires that more than one component be supplied to meet the “substantial portion” requirement.
- A qualitative “important/essential component” test is inconsistent with the statutory text and risks indeterminate, case-by-case assessments untethered to the component count.
- The contrast between § 271(f)(1) (“all or a substantial portion of the components”) and § 271(f)(2) (“any component,” with additional limitations) supports reading § 271(f)(1) to address supplying multiple components rather than a single component.

## Conclusion

The Court limited § 271(f)(1) to situations where more than one component of a multicomponent patented invention is supplied from the United States for foreign combination, rejecting liability based solely on exporting a single component even if it is central to the finished product.


Life Techs. Corp. v. Promega Corp., 137 S. Ct. 734 (2017)