NYIPLA Urges Supreme Court to Uphold Federal Circuit’s Flexible Approach to Patent Infringement Liability for Supply of Components of Patented Inventions

October 25, 2016

The firm authored an amicus curiae brief for the New York Intellectual Property Law Association, urging the Supreme Court to affirm the Federal Circuit’s holding that supply of a single component of a multicomponent invention can, under appropriate circumstances, trigger patent infringement liability under § 271(f)(1) for an exporter that “supplies . . . from the United States all or a substantial portion of the components of a patented invention” in a manner as to actively induce combination of the components abroad, if such combination would constitute infringement in the United States.

The amicus brief explains that a flexible approach to determining what constitutes a “substantial portion,” rather than a rigid numerical test, is in keeping with the text and purpose of the statute. It is also consistent with the Supreme Court’s repeated guidance that the patent laws should be applied flexibly and with attention to the specific facts of individual cases. The brief stresses that petitioner’s reliance on the presumption against extraterritorial application of law in support of its numerical construction of “substantial portion” is misplaced. The presumption has no application to interpreting the nature of domestic conduct necessary to trigger liability, and is not a vehicle for courts to implement trade or economic policy.

The Supreme Court Case is captioned Life Technologies Corporation et al. v. Promega Corporation, No. 14-1538.

To read the full amicus curiae brief, click here.