Tag Archives: infringement

Supreme Court Narrows Infringement for Sending Component(s) Abroad – But Only by a Little Bit

By Steve Hall

Last week, in a near-unanimous opinion rendered without dissent, the Supreme Court emphasized quantity over quality, holding that it is not an infringement under the Patent Act to supply a single component of a multi-component product being manufactured abroad.  Life Technologies Corp. v. Promega Corp., No. 14-1538, — S.Ct. –, 2017 WL 685531 (Feb. 22, 2017).  The particular section of the Act before the Supreme Court was 35 U.S.C. §271(f)(1), which makes it possible for infringement to arise from “[supplying] or [causing] to be supplied in or from the United States all or a substantial portion of the components of a patented invention.”  The purpose of the statute is to prevent a domestic manufacturer from making all, or substantially all, components for an infringing product in the U.S., while shipping the components overseas for assembly.  Id.  The combining of components overseas must be performed “in a manner that would infringe the patent if such combination occurred within the United States.”  35 U.S.C. §271(f)(1).

In terms of the discrete issue before it, the Supreme Court held that “when a product is made abroad and all components but a single commodity article are supplied from abroad, the activity” does not infringe.  Life Technologies Corp., at *8.  The product at issue was a Continue reading Supreme Court Narrows Infringement for Sending Component(s) Abroad – But Only by a Little Bit

The Written Description Requirement: New Wrinkles on a Familiar Story (Part One of Three)

By Stephen C. Hall

This is part one of a three-part series on written description requirements and the developing case law under the America Invents Act (AIA).

InventionsIt happens regularly in patent litigation: a patentee asserts a patent that arose from a child application, the child application claims priority to an application filed years before, and the development of prior art in the intervening years affects the outcome of the litigation. In various cases, the outcomes (along with millions of dollars in damages) have hinged on the teachings of a parent application.

One such case involved the alleged infringement of Continue reading The Written Description Requirement: New Wrinkles on a Familiar Story (Part One of Three)