Supreme Court Limits Foreign Reach of U.S. Patents

by John Roberts on February 28, 2017

This week the Supreme Court in Life Technologies Corp. et al. v. Promega Corp., No. 14-1538, 580 U.S. __ (2017) (see copy here) ruled that the supply of a single component of a multicomponent invention for manufacture abroad does not give rise to liability under Section 271(f)(1) of the Patent Act, which prohibits the supply from the United States of “all or a substantial portion of the components of a patented invention” for combination abroad. It does not matter if that single component arguably creates “a substantial portion” of the infringing product, because the Supreme Court created a bright-line rule that a single component can never be enough. Thus, to violate 35 U.S.C. 271(f)(1), an alleged infringer will need to have shipped from the United States at least two components of a device, that when assembled in a foreign country, reads on a valid claim of a U.S. patent.

The Supreme Court has not favored bright-line rules in its recent jurisprudence under the Patent Act. In fact, the Supreme Court has often overturned the Federal Circuit for creating such bright-line tests, which make the law easier and more predictable to apply but sometimes at the cost of doing justice in a particular case. Perhaps the Supreme Court has become aware of the havoc they have created with unintelligible decisions like Alice Corp. v. CLS Bank International, 573 U.S. __, 134 S. Ct. 2347 (2014).

John Roberts


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