In Life Technologies Corp. et al. v. Promega Corp. et al., the U.S. Supreme Court ruled that the phrase "a substantial portion of the components" from the language of the statute of 35 U.S.C. 271(f)(1), is a quantitative measurement, not a quantitative one. That statute provides the standard for induced infringement:
“Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.”
More information on this case can be found at the following link:
http://www.lexology.com/library/document.ashx?g=ada54c33-fff5-4df8-adbe-a589c84f98a9
The upshot is that it presently appears that shipping only a single component of the infringing device is not sufficient grounds for establishing liability for induced infringement under the statute. Note, however, that in 35 U.S.C. 271(c), the sister provision describing the grounds for establishing contributory infringement, uses very different language:
"Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer."
However, unlike induced infringement, a defense to contributory infringment is that the component in question has "a substantial noninfringing use."
“Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.”
More information on this case can be found at the following link:
http://www.lexology.com/library/document.ashx?g=ada54c33-fff5-4df8-adbe-a589c84f98a9
The upshot is that it presently appears that shipping only a single component of the infringing device is not sufficient grounds for establishing liability for induced infringement under the statute. Note, however, that in 35 U.S.C. 271(c), the sister provision describing the grounds for establishing contributory infringement, uses very different language:
"Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer."
However, unlike induced infringement, a defense to contributory infringment is that the component in question has "a substantial noninfringing use."
RSS Feed