Supreme Court Commentaries
Patent Infringement, IP Clause
Constitutional Law | Supreme Court of the United States
American patent law grants inventors the exclusive right, within U.S. territory, to make, sell, use, and import their patented inventions. In response to attempts to circumvent the right by making the components of an invention within the U.S. and exporting them for assembly abroad, Congress passed 35 U.S.C. § 271(f), prohibiting “suppl[ying] . . . from the United States all or a substantial portion of the components of a patented invention . . . to actively induce the combination of such components outside of the United States . . . .” Petitioner Life Technologies supplied one commodity component of a patented five-component genetic testing kit from the U.S. The Federal Circuit held them liable under § 271(f), upholding a jury verdict and allowing that one component could be a “substantial portion of the components.” The Supreme Court reversed, reading § 271(f) not to reach the supply of a single component. This ruling will help to preserve suppliers’ confidence in their freedom to ship commodities overseas without being liable for infringement.
G. Edward Powell, Commodity Supply and Extraterritorial Patent Infringement in Life Technologies V. Promega, 12 Duke Journal of Constitutional Law & Public Policy Sidebar 163-176 (2017)