Quantitative, Not Qualitative – The Supreme Court Overrules the Federal Circuit Again
In Life Techs. Corp. v. Promega Corp., the US Supreme Court reversed the Court of Appeals for the Federal Circuit yet again, holding that making a single component of a patented invention in the US, and sending that component outside the US to manufacture a patented product, is not an infringing act under 35 U.S.C. § 271(f)(1).
The activity at issue involved the assembly, in the United Kingdom (UK), of five components constituting a patented invention. The parties agreed that the one component manufactured in the US and sent to the UK for incorporation into the assembly was an important component. The question, then, was whether that one important component could be a “substantial portion of the components of a patented invention” under the statute. The district court’s answer to the question was “no” (overruling a contrary jury finding). The Federal Circuit’s answer was “yes”. The Supreme Court said “no,” and went farther, holding that one component of a patented invention could never be a “substantial portion of the components of a patented invention” under this section of the statute.
The text of 35 U.S.C. § 271(f)(1) reads (emphasis added):
Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.
After attempting to discern the meaning of “substantial portion” by referring to dictionary definitions, the Supreme Court looked at the phrase “of the components of a patented invention” as a modifier to “a substantial portion”. The Court noted that “components,” plural, is present in this section, and therefore has meaning. That meaning points to a quantitative rather than to a qualitative interpretation.
The Supreme Court reasoned that the first portion of 35 U.S.C. § 271(f) was intended to deal with multiple components, while the second portion was intended to deal with a single component. Therefore, 35 U.S.C. § 271(f)(1) must involve more than one component in order to warrant a finding of infringement. The Court fixed on this quantitative, rather than on a qualitative assessment of the term “a substantial portion”.
In reaching this decision, the Court reasoned, “Surely a great many components of an invention (if not every component) are important. Few inventions, including the one at issue here, would function at all without any one of their components.”
Ultimately, the Court held that ascribing a quantitative, rather than a qualitative meaning to the phrase “a substantial portion” ultimately would be more helpful to factfinders in what otherwise would be close cases in future trials, by providing clearer guidance to “market participants attempting to avoid liability”.
But the Court went further, holding that a single component can never constitute a “substantial portion” so as to trigger liability under § 271(f)(1). To defend this holding, the Court looked to the immediately following section, 35 U.S.C. § 271(f)(2), which is as follows (emphasis added):
Whoever without authority supplies or causes to be supplied in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial noninfringing use, where such component is uncombined in whole or in part, knowing that such component is so made or adapted and intending that such component will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.
The Supreme Court held:
Reading § 271(f)(1) to refer to more than one component allows the two provisions to work in tandem. Whereas § 271(f)(1) refers to “components,” plural, § 271(f)(2) refers to “any component,” singular. And, whereas § 271(f)(1) speaks to whether the components supplied by a party constitute a substantial portion of the components, § 271(f)(2) speaks to whether a party has supplied “any” noncommodity component “especially made or especially adapted for use in the invention.
The Court stated that its conclusion that § 271(f)(1) “prohibits the supply of components, plural, gives each subsection its unique application”.
By holding that a single component of a patented invention can never constitute a “substantial portion” for purposes of § 271(f)(1), the Supreme Court simplified things for factfinders to some extent.
The Court’s decision is easy to understand when a device or product patent claim to a device has three or more components. Then, “a substantial portion” could be two or more of the components, but fewer than three or more, and not be “all”. But what happens when a device or product patent claim has only two components? In that situation, under the Supreme Court’s quantitative interpretation, “a substantial portion” would be two of the components, and so would be coextensive with “all”.
In that two-component circumstance, wouldn’t the words “a substantial portion” lose their meaning if “a substantial portion” meant the same as “all”?
The answer should be “no,” for several reasons. First, if two components of a two-component patent claim are manufactured in the US, and the resulting product is assembled outside the US, the “all” portion of § 271(f)(1) is satisfied anyway. Second, that “all” and “a substantial portion” are connected by the disjunctive “or,” does not prevent “a substantial portion” from meaning the same as “all” where appropriate (as it would be with a two-component claim). Third, if only one component of the claim is manufactured in the US, and is not a staple article of commodity of commerce, § 271(f)(2) still can apply, and it doesn’t matter whether the § 271(f)(1) is qualitative or quantitative.
Looking at this third point a little more closely, as a practical matter, in a two-component patent claim, if the component manufactured in the US is “a staple article or commodity of commerce suitable for substantial non-infringing use,” there will be something special about the other component, such that it should be patented separately, and form a separate cause of action (if it is manufactured in the US). Otherwise, the patent claim could be a combination of two components, with nothing special about either of them. Query whether such a combination would withstand a serious validity challenge.
More likely, the component manufactured in the US will be a component that is “especially made or especially adapted for use in the invention”. Certainly that is what a patent owner would argue. In that case, § 271(f)(2) would apply.
Overall, the Supreme Court decision does make things easier for the trier of fact in cases like these. Whether the decision really is grammatically correct in all circumstances would seem to be beside the point.
 2017 U.S. LEXIS 1428 (Feb. 22, 2017).
 Id. at *10-11.
 Id. at 11-12.
 Id. at *13.
 See Id.
 See Id. at *14.
 Id. at *14-15.
 Id. at 15.
 Id. at 16.