Thermo Fisher did not infringe genetic-testing patent, U.S. top court says

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By Andrew Chung

<span class="articleLocation”>The U.S. Supreme Court on Wednesday cleared a
subsidiary of biotech company Thermo Fisher Scientific Inc of infringing a genetic-testing kit patent held by
Promega Corp, overturning a lower court’s decision.

The justices ruled 7-0 that the subsidiary, Life
Technologies Corp, could not be held liable for
violating the patent by shipping one part of a testing kit from
the United States to Britain, where it was assembled with other
components and sold overseas.

California-based Life Technologies and privately held
Wisconsin-based Promega both sell DNA testing kits for forensic
identification, paternity testing, medical research and other

They were fighting over a law that prevents companies from
evading U.S. patent infringement laws by shipping the parts of a
patented invention to a foreign locale and making the infringing
product there. The law forbids supplying a “substantial portion
of the components” from the U.S. for this purpose.

Life Technologies assembles its DNA testing kits in Britain.
But one component of the kit, an enzyme to make copies of DNA,
is shipped from the United States.

Justice Sonia Sotomayor, writing for the court, said the law “has a quantitative, not a qualitative, meaning” and was not
meant to include a single component supplied from the United

Promega sued Life Technologies in 2010 in federal court in
Madison, Wisconsin, alleging infringement of a patent on a DNA
analysis kit. A jury in 2012 awarded Promega $52 million in
damages, but the judge later set aside the verdict saying there
should be no damages on foreign sales because the one shipped
element did not amount to a “substantial portion” of the kit’s

In 2014, the Federal Circuit Court of Appeals, a specialized
patent court in Washington, again ruled in favor of Promega. The
court said that the enzyme, though just one part of the kit,
represented a “substantial portion” because the kit would be
useless without it.

Life Technologies, whose case was backed by the former Obama
administration, appealed to the Supreme Court in 2015, arguing
that the law relates to the quantity of components involved, not
their relative importance in a product. To infringe a U.S.
patent, all or nearly all of the components must come from the
United States, the company said.

Life Technologies argued that the Federal Circuit’s decision “dangerously expands the extraterritorial reach of U.S. patent
law” and could hurt domestic manufacturers and parts suppliers.

Chief Justice John Roberts did not participate in the case.

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