Life Technologies Corporation v. Promega Corporation

Promega Corporation (plaintiff) held an exclusive license to the Tautz patent for a five-component genetic testing tool kit. Life Technologies Corporation (defendant) manufactured genetic test kits. Promega sublicensed Life Technologies to manufacture and sell tool kits using the Tautz patent worldwide in certain law-enforcement fields. Life Technologies made four of the tool-kit components in the United Kingdom, but made the fifth, called the Taq polymerase, in the United States then shipped it to the U.K. for assembly into the kits. Promega sued Life Technologies for supplying the polymerase for kits used in clinical and research markets. Specifically, Promega alleged that supplying the polymerase from the U.S. to the U.K. violated federal patent laws prohibiting supplying all or substantially all of a patented invention’s components from the U.S. for assembly overseas. The jury returned a verdict for Promega, but the trial court granted Life Technologies judgment as a matter of law, reasoning that supplying only one component of a multicomponent invention could not amount to supplying “all or a substantial portion” of the invention under federal patent law. The Federal Circuit reversed and reinstated the jury verdict, finding that supplying one component sufficed if it was important or essential to the invention as a whole, and that the polymerase was a major or main component of the tool kits. Life Technologies appealed.