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Supreme Court Considers When US Patent Violations Are 'Induced' Abroad (arstechnica.com)
The US Supreme Court today will take up a case that will determine how much help an overseas manufacturer can get from the U.S. without running afoul of US patent laws. From a report on ArsTechnica: The case originates in a dispute between two competitors in the field of genetic testing. Both Promega Corporation and Life Technologies (selling through its Applied Biosciences brand) make DNA testing kits that can be used in a variety of fields, including forensic identification, paternity testing, medical treatment, and research. Promega licensed several patents to Applied Biosystems that allowed its competitor to sell kits for use in "Forensics and Human Identity Applications." The license forbade sales for clinical or research uses. In 2010, Promega filed a lawsuit in federal court, saying that Life Technologies had "engaged in a concerted effort to sell its kits into unlicensed fields," thus infringing its patents. A Wisconsin federal jury found that Life Tech had willfully infringed and should pay $52 million in damages. But the district judge overseeing the case set aside that verdict after trial, ruling that since nearly all of the Life Tech product had been assembled and shipped from outside the US, the product wasn't subject to US patent laws.
The patented parts of the product were not produced in the US
Um, one of them actually was. Whether that's enough to constitute infringement of Promega's U.S. patent is the exact question the Supreme Court is taking up:
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.
Uh... a patent protects the market. It'd be fine for Samsung to make the devices overseas in a jurisdiction where the devices didn't infringe, as long as they didn't then import and sell them in the U.S.
Duh.
No patent protection on tech manufactured overseas?
Different things are patentable in different countries. For instance, America allows patents on software, and DNA sequences. Many other countries do not. There are also issues of jurisdiction. In this case the infringing product was sold in the UK, so maybe it should be resolved in British courts.
Patent was for a process, not any individual components.
Sorry, but that's just flat wrong. The asserted claim that gave rise to the appeal (claim 42 of U.S. Patent No. RE 37,984) is not on a process at all, but on a kit with five individual components:
The component produced in the US (the enzyme) is not patent protected, it's a commonly used commodity.
That indeed is Life Tech's argument, which is not exactly a slam dunk given the fact that Section 271(f)(2) specifically requires a non-commodity component to find infringement, while Section 271(f)(1) does not. This argument also presumes that someone could never take a set of commodity components and combine them in a patentably distinct way.
Courts view was that, since this component was a commodity that is not unique to this process, it is not a substantive component.
You must mean the district court, which is irrelevant at this point. The Court of Appeals for the Federal Circuit held exactly the opposite -- that the commodity Taq polymerase is indeed "a substantial portion of the components of a patented invention" -- and that's the holding the Supreme Court is currently considering.
A Wisconsin federal jury found that Life Tech had willfully infringed and should pay $52 million in damages. But the district judge overseeing the case set aside that verdict after trial, ruling that since nearly all of the Life Tech product had been assembled and shipped from outside the US, the product wasn't subject to US patent laws.
It's infringement under US Patent law to make, use, or sell a patented invention in the US. However, it's also infringement to import a patented invention, made elsewhere, into the US. So you can't, for example, escape liability by saying "oh, we don't manufacture in the US. We manufacture in Mexico and then heave them over Trump's wall to waiting buyers." So, something had been assembled and shipped from outside the US would still be subject to US patent laws if it was being shipped to the US.
In this case, LifeTech manufactures their kits in the UK and sells them in Europe (and elsewhere). One component of the kit is manufactured in the US and shipped from the US to the UK, and the question is whether that component brings those sales under US patent law.
So, just to clarify, the summary should be "since nearly all of the Life Tech product had been assembled and shipped from outside the US to locations outside the US, the product wasn't subject to US patent laws."