Quick Look: U.S. Supreme Court to Review Question of Extra-Territorial Infringement

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By: Jonathan P. Osha


On June 27, 2016, the Supreme Court granted review of the Federal Circuit’s decision in Life Technologies Corp. V. Promega Corp. relating to infringement under 35 U.S.C. §271(f)(1).  The Federal Circuit had found Life Technologies to be liable for patent infringement for worldwide sales of a multi-component kit, even though only a single component of that kit was manufactured in and supplied from the United States.

Section 271 (f)(1) provides:

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.

The Supreme Court has previously cautioned that this provision is to be interpreted narrowly.  See Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007).  The exact question to be considered by the Supreme Court in this case is:

Whether the Federal Circuit erred in holding that supplying a single, commodity component of a multi-component invention from the United States is an infringing act under 35 U.S.C. §271(f)(1), exposing the manufacturer to liability for all worldwide sales.