# Life Technologies v. Promega: One Component Is Not a 'Substantial Portion' Abroad

> The Supreme Court holds that supplying a single commodity component from the United States cannot trigger §271(f)(1) liability, reading 'substantial portion' as a quantitative measure.

Topic: Patents  |  Author: Lidiia Levitska  |  Source: Intellectual Property Law (outsideipcounsel.com)
Canonical: https://outsideipcounsel.com/blog/life-technologies-v-promega-single-component-271f/


In *Life Technologies Corp. v. Promega Corp.*, No. 14-1538 (U.S. Feb. 22, 2017), the Supreme Court resolved a question that had quietly divided patent practitioners since §271(f) was enacted: can shipping a *single* component of a multi-component invention from the United States, for assembly into the finished invention abroad, expose the supplier to U.S. patent liability? Argued December 6, 2016, and decided February 22, 2017, the Court answered no, unanimously reversing the Federal Circuit. Justice Sotomayor wrote for the Court; Justice Alito, joined by Justice Thomas, concurred in part and in the judgment. Chief Justice Roberts took no part. The holding turned on three words, "a substantial portion of the components," and the Court's conclusion that they impose a quantitative, not qualitative, threshold.

## At a glance

- **Case:** *Life Technologies Corp. v. Promega Corp.*, No. 14-1538
- **Court:** Supreme Court of the United States
- **Argued / Decided:** December 6, 2016 / February 22, 2017
- **Vote:** 7-0 (reverse and remand)
- **Majority:** Sotomayor, J.
- **Separate opinion:** Alito, J., concurring in part and concurring in the judgment, joined by Thomas, J.
- **Not participating:** Roberts, C.J.
- **Holding:** Section 271(f)(1)'s phrase "a substantial portion of the components" is quantitative; the supply of a single component does not qualify, so exporting one component for combination abroad cannot, by itself, create liability.

Promega held rights in a patent covering a genetic-testing toolkit, a multiplex assay used in forensic and clinical work, comprising five components. Life Technologies manufactured one of those components, the Taq polymerase enzyme, in the United States and shipped it to the United Kingdom, where the remaining four components were made and the kits were assembled and sold worldwide. Promega sued under §271(f)(1), contending that supplying the enzyme from the U.S. for combination abroad was infringement. A jury found for Promega, the district court granted judgment as a matter of law to Life Technologies, and the Federal Circuit reinstated the verdict, holding that a single important component could be a "substantial portion." The Supreme Court reversed.

## The text: §271(f)(1) versus §271(f)(2)

Congress wrote §271(f) in two parts, and the structure proved decisive. Subsection (f)(1) reaches a supplier who provides "all or a substantial portion of the components of a patented invention" in a manner actively inducing combination abroad. Subsection (f)(2) reaches a supplier of even a single component that is "especially made or especially adapted for use in the invention and not a staple article or commodity of commerce." Promega had pursued only (f)(1).

That choice mattered because the two subsections divide the field by reference to different concerns. Subsection (f)(2) already addresses the single-component scenario, but only for non-staple, specially adapted components, and only with a heightened intent requirement. Reading (f)(1)'s "substantial portion" to capture *any* single important component, the Court reasoned, would swallow (f)(2) and erase the careful gradations Congress built. A staple commodity supplied alone would escape (f)(2) by definition, yet fall within (f)(1), an outcome that would render (f)(2)'s "especially made" limitation meaningless.

## Quantitative, not qualitative

The crux was whether "substantial portion" measures *number* (a quantitative reading) or *importance* (a qualitative reading). The Federal Circuit had taken the qualitative path, treating the Taq polymerase as substantial because it was central to the kit's function, even though it was only one of five parts and a commodity available off the shelf.

The Supreme Court rejected that approach. Reading "substantial" in context, the Court emphasized the neighboring words: the statute speaks of "a substantial portion of the *components*" (a phrase that takes its meaning from a count of parts, not an assessment of each part's significance). Both "all" and "portion," the Court observed, convey a quantitative meaning. And had Congress meant importance, the more natural drafting would have dropped the reference to "the components" entirely and reached the supply of "all or a substantial portion of . . . a patented invention, where [its] components are uncombined in whole or in part." A qualitative reading, the Court said, would leave the phrase "of the components" with no work to do the first time it appears. The plural "components" anchored the inquiry in quantity. The Court declined to adopt a case-by-case qualitative test, which would have required courts and juries to rank the relative importance of every part of an invention, an unworkable and indeterminate exercise that would generate uncertainty for global suppliers.

Having settled on a quantitative reading, the Court took the modest further step the case required: whatever the precise floor for "a substantial portion," a *single* component does not meet it. The statutory phrase, read as a count, necessarily contemplates more than one. The Court expressly declined to decide how many components short of "all" suffice, only that one is not enough. Notably, the Court did not rest on the presumption against extraterritoriality, which many observers had expected to drive the case. The opinion decides the question on the statutory text and structure alone and does not invoke the presumption at all.

## What the Court left open, and the concurrence

Justice Alito, joined by Justice Thomas, joined all but Part II-C of the Court's opinion, the section reading §271(f)'s legislative history against the gap left by *Deepsouth Packing Co. v. Laitram Corp.*, 406 U.S. 518 (1972). In his view the statute's text showed that Congress meant to go "at least a little further" than *Deepsouth*, but "the genesis of §271(f) sheds no light" on how much further. He wrote separately mainly to underscore the limits of the holding: "I do not read the opinion to suggest that any number greater than one is sufficient. In other words, today's opinion establishes that more than one component is necessary, but does not address how much more."

Separately, the majority left the intent question alone. Responding to arguments about §271(f)(1)'s "active inducement" language, it noted only that whatever intent the subsection may require, it also imposes liability solely on a party who supplies a substantial portion of the components.

The practical effect of the decision is to channel single-component cases into §271(f)(2), where liability requires both that the exported component be specially adapted (not a commodity) and that the supplier act with the requisite intent. For a commodity like Taq polymerase, that route was closed, and so Promega's theory failed entirely.

## Open questions

- **How many components are "a substantial portion"?** The Court fixed only the floor (one is too few) and declined to set a number, leaving lower courts to calibrate the threshold above one.
- **How is the denominator counted?** Whether "components" are counted as discrete parts, by subassemblies, or by some functional unit can change whether a given supply clears the bar.
- **Does the quantitative rule fit chemical and biotech inventions?** Counting "components" is intuitive for machines but contestable for compositions, reagent kits, and processes.
- **What work does intent do?** Because (f)(1) requires active inducement of combination abroad, the interaction between the quantitative threshold and the intent element remains underexplored.

## Implications

- U.S. manufacturers may export a single commodity component for foreign assembly without §271(f)(1) exposure, a meaningful safe harbor for suppliers of reagents, chemicals, and standard parts.
- Patent owners pursuing single-component exports must satisfy §271(f)(2)'s stricter "especially made or especially adapted" and intent requirements, which commodity components rarely meet.
- The decision sharpens the divide between (f)(1) (multiple components) and (f)(2) (one specially adapted component), discouraging pleading single-component cases under (f)(1).
- The quantitative rule supplies a clearer, if incomplete, line for global supply-chain planning, reducing the risk that a single U.S.-sourced part anchors worldwide damages.
- Together with *Microsoft Corp. v. AT&T Corp.*, 550 U.S. 437 (2007), the case confirms a narrowing trajectory for §271(f), though the two decisions get there by different routes: *Microsoft* leaned on the presumption against extraterritoriality, while *Life Technologies* rests on the statutory text.

## Frequently asked questions

**What does "substantial portion" mean after this case?** It is a quantitative measure of the number of components supplied, not a judgment about how important any one component is. A single component is categorically not enough.

**Could Promega have won under a different theory?** Possibly under §271(f)(2), which reaches a single component, but only if that component were specially made or adapted for the invention and not a commodity. The Taq polymerase was a staple article, so that route was unavailable.

**Did the Court say how many components are required?** No. It held only that one is insufficient and expressly declined to identify the precise number that constitutes "a substantial portion."

## Authorities and sources

- *Life Technologies Corp. v. Promega Corp.*, 580 U.S. 140, No. 14-1538 (U.S. Feb. 22, 2017), slip opinion: https://www.supremecourt.gov/opinions/16pdf/14-1538_p8k0.pdf
- Legal Information Institute, opinion and syllabus: https://www.law.cornell.edu/supremecourt/text/14-1538
- 35 U.S.C. §271(f): https://www.law.cornell.edu/uscode/text/35/271
- Faegre Drinker, "Supreme Court Decides Life Technologies Corp. v. Promega Corp.": https://www.faegredrinker.com/en/insights/publications/2017/2/supreme-court-decides-life-technologies-corp-v-promega-corp
- Hunton, analysis of single-component liability under §271(f)(1): https://www.hunton.com/insights/legal/life-technologies-corp-v-promega-corp-exportation-of-a-single-component-is-not-subject-to-patent-liability-under-section-271-f-1-of-the-patent-act