Life Technologies Corp. v. Promega Corp.

PETITIONER: Life Technologies Corp., et al.
RESPONDENT: Promega Corp.
LOCATION: U.S. District Court for the Western District of Wisconsin

DOCKET NO.: 14-1538
LOWER COURT: United States Court of Appeals for the Federal Circuit

GRANTED: Jun 27, 2016
ARGUED: Dec 06, 2016

Carter G. Phillips - for petitioners
Seth P. Waxman - for respondents
Zachary D. Tripp - for United States as amicus curiae

Facts of the case

Promega Corporation owned four patents and was the exclusive licensee of another one for technology used in kits that can conduct genetic testing. The kits are usually used for the purposes of identifying forensic or paternity matches. In 2010, Promega sued Life Technologies Corporation (LifeTech) for infringing on the patents in question, and LifeTech filed counterclaims that argued that the asserted claims of the patents were invalid. The district court determined that LifeTech had directly infringed on the patents and the case proceeded to damages. During the damages phase, there was a dispute about whether or not Promega had met its burden to prove that it was eligible for damages based on its worldwide sales. The jury determined that Promega was eligible for the worldwide damages, but the district court granted LifeTech’s motion to vacate the judgment because it determined that, as a matter of law, Promega had failed to present sufficient evidence to sustain that jury verdict. The U.S. Court of Appeals for the Federal Circuit reversed and determined that there was substantial evidence that LifeTech was liable for worldwide damages.


Does supplying a single component of a multi-component invention from the United States for sale abroad expose the manufacturer to liability for infringement based on worldwide sales?

Media for Life Technologies Corp. v. Promega Corp.

Audio Transcription for Oral Argument - December 06, 2016 in Life Technologies Corp. v. Promega Corp.

John G. Roberts, Jr.:

We'll hear argument this morning in Case 14-1538, Life Technologies Corporation v. Promega Corporation. Mr. Phillips.

Carter G. Phillips:

Mr. Chief Justice, and may it please the Court: I think because this is largely an international trade case, it's probably useful to put this case in context and to compare it to the facts that gave rise to the passage of Section 271(f) that's at issue in this case.

You'll recall that in the Deepsouth case, that was a case involving a shrimp deveiner in which all of the activities took place within the United States, except for the final act that took less than an hour to assemble in a foreign country.

In that case, this Court held even that was not within the meaning of the -- of the patent statute as it existed then, and Congress then acted to fill that particular loophole. The facts of this case seem to me to be the polar opposite of that.

With -- Life Tech has -- Life Technologies operates an -- an enormous plant in England, in the United Kingdom.

It spends tens of million dollars on that plant.

Four out of the five components that go into the creation of the kits that are at issue in this case are sourced outside of the United States; one inside.

I'll come back to that in a minute.

And as relevant to this litigation, all of the kit -- kits are sold outside of the United States. So the only contact that any of this has with the United States is the fact that a single, commodity product is shipped to England as part of the process for the fabrication of these particular kits. Now, that commodity product is called a Taq polymerase, which I will readily concede that when I think about what you buy off-the-shelf, I don't go to Costco to buy Taq polymerase, but I'm told, and I think it's absolutely undisputed in the record, that this is a commodity.

This is at the essence of what the Congress enacted in (f)(2), which is a staple article or commodity of commerce suitable for many non-infringing uses.

And, indeed, if you get online and put in "Taq polymerase," you can find literally dozens and dozens of ways to purchase it online at this time.

And that was true as much in 2006.

It may have been a significant product in 1989, but clearly by 2006, it was a commodity. And so the question is, is whether or not, simply by using a single, staple article, Congress intended through 271 to -- to declare that this is --

Sonia Sotomayor:

Could you tell us --

Carter G. Phillips:

-- a violation.

Sonia Sotomayor:

-- is this product available outside the U.S.?

Carter G. Phillips:

Taq polymerase?

Sonia Sotomayor:


Carter G. Phillips:



It's -- it's readily available throughout the world through -- there are a variety of manufacturers who wish to make --

Sonia Sotomayor:

There's no patent on that particular component?

Carter G. Phillips:

No, none that -- none that exists any longer, no.

As I said, it's a commodity product.

The --

Ruth Bader Ginsburg:

Do we know why that particular component was exported from the United States? You -- you said all the others --

Carter G. Phillips:


Ruth Bader Ginsburg:

-- were made in England.

Carter G. Phillips:

Yeah, and the key to this is you want -- you want to get the best quality product at -- presumably, at the lowest possible price.

And -- and most of these were purchased -- most of the Taq was purchased from the Roche company, and I -- and I suspect they just had a better supply arrangement. I mean, that's -- that's the key to this case in a lot of ways, is what you're looking for is, what are the best supply arrangements that you can make on a global basis? Can you get them in the United States? Can you get them outside the United States? And what it seems to me clear that Congress could never have intended was to in some way disadvantage U.S. manufacturers who are providing a particular staple. Indeed, I would read 271(f)(2) as saying categorically that the one thing Congress did not want to do is to interfere with the ability to -- of a manufacturer to provide a staple article as part of the -- as part of an activity outside of the United States.