In Promega Corp. v. Life Technologies Corp. (13-1011), a split Federal Circuit found that LifeTech did infringe the Tautz patent, which claimed a process for examining DNA samples. Promega is an exclusive licensee of the patent. LifeTech produced a component for a genetic testing kit in the U.S. and shipped the component to an overseas subsidiary, where the kit was put together. The kit was then subsequently distributed worldwide, including the U.S. LifeTech admitted to the distribution in the U.S. as infringing. However, a district court had ruled that LifeTech could not be liable for induced infringement because Patent Act section 271(f) required the involvement of a third party. Infringement under 271(f) would allow for damages based on worldwide sales.
The Federal Circuit disagreed. The Federal Circuit held that “[u]nder 35 U.S.C. § 271(f)(1), a party may infringe a patent based on its participation in activity that occurs both inside and outside the United States.” Consequently, a third-party was not required for LifeTech to infringe under this theory.
Chief Judge Prost dissented-in-part, stating that Supreme Court precedent clearly required a third party for inducement liability.
source: Maier & Maier, PLLC
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