Section 271(f)(1) Can Be Met Where Only a Single, but Substantial, Component is Shipped from the U.S. and the Entity Shipping that Component Actively Induces Itself to Combine that Component with Other Components Outside the U.S.

The claims of the “Tautz” patent required the combination of five components, one of which is an enzyme called Taq polymerase.  The accused infringer Life Technologies manufactured the Taq polymerase in the U.S. and shipped it to its facility in the United Kingdom for inclusion with the other components of the claim and that combination is shipped worldwide.  The combination would be inoperable without the Taq polymerase.  The district court held that Life did not infringe under §271(f)(1) because that section requires that another party be induced, i.e., a party cannot induce itself and because a “substantial portion of the components” requires that at least two components be shipped from the U.S., i.e., § 271(f)(1) cannot be met where only a single component is shipped.  The Federal Circuit reversed, holding both that § 271(f)(1) does not require that a third party be induced and that it can be met where a single, but substantial, component is shipped, thereby reversing the lower court’s decision.

Additionally, the court reversed the district court’s decision and held that all of the claims of the “Promega” patents were invalid for violating the enablement requirement of § 112, ¶1.  The claims were construed to require a particular combination comprising three specific loci.  The district court denied Life Technologies’ motion on the issue of enablement, because it concluded that the claims need not enable “unrecited elements.”  The court reversed, holding that enablement must be commensurate with the full scope of the claims.  Here, the “unrecited” elements include combinations made possible by the use of “comprising” in the claims.  The court held that Promega’s own statements during prosecution that the teachings of its own patents would not have enabled one skilled in the art to identify these “unrecited” combinations without undue experimentation.  

Promega Corp. v. Life Technologies Corp., Case No. 2013-1011, -1029, -1376 (December 15, 2014); Opinion by: Chen, joined by Mayer and Prost (in part); dissent-in-part by Prost; Appealed From: Western District of Wisconsin, Crabb, J.  To read the full opinion, click here. 

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