Exporting a Single Commodity Can't Trigger Patent Liability, Supreme Court Rules

The Supreme Court recently issued its decision in Life Technologies v. Promega, a case that involved exporting a commonly used laboratory chemical that had been combined into a patented product overseas. The Court reversed the Federal Circuit's decision, ruling that a single commodity can't trigger patent liability because that doesn’t comply with the requirement that an infringer export "all or a substantial portion" of the "components" needed to create a patented product. Forbes contacted Finnegan attorney Doris Johnson Hines for her thoughts on the decision.

Hines said that the decision somewhat clarifies the law, but still leaves substantial unanswered questions. While the court judged "components" by quantity and not their qualities, Hines said, "...it's unclear to me what a component of a claimed invention is." She added, "Lawyers can draft a patent to claim complex 'components' or break them down into smaller parts, for example, claiming the touchpad, handset, and cords of a telephone as part of a telephone videoconferencing system instead of just a telephone and a video monitor. [But] what if a company exported handsets and cords for use in an infringing videoconferencing system overseas? Would they meet the 'substantial portion' test where a single 'telephone' would not?"