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Single Component Shipped Abroad Not Enough for Infringement


By
Smith & Hopen PA

Life Technologies Corporation, et al., Petitioners v. Promega Corporation

U.S. Supreme Court, February 22, 2017

Section 271(f )(1) of the Patent Act of 1952 prohibits the supply from the United States of “all or a substantial portion” of the components of a patented invention for combination abroad. The technology in question is used to amplify small amounts of DNA for forensic identification and for clinical and research purposes. The kit covered by U.S. Reissue Patent No. RE 37,984 contains five components:

1) a mixture of primers that mark the part of the DNA strand to be copied;

2) nucleotides for forming replicated strands of DNA;

3) an enzyme known as Taq polymerase;

4) a buffer solution for the amplification; and

5) control DNA

Life Technologies shipped only the Taq polymerase enzyme to the United Kingdom for combination with the other components. Promega sued arguing that the term “substantial portion” of the component could be qualitative (as to relative importance) and was not necessarily quantitative. The Supreme Court disagreed and held that a single component is not enough to trigger Section 271(f)(1).

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