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SUPREME COURT OF THE UNITED STATES
_________________
No. 14–1538
_________________
LIFE TECHNOLOGIES CORPORATION, et al.,
PETITIONERS
v. PROMEGA CORPORATION
on writ of certiorari to the united states
court of appeals for the federal circuit
[February 22, 2017]
Justice Sotomayor delivered the opinion of the
Court.
This case concerns the intersection of
international supply chains and federal patent law. Section
271(f)(1) of the Patent Act of 1952 prohibits the supply from
theUnited States of “all or a substantial portion” of the
components of a patented invention for combination abroad. 35
U. S. C. §271(f)(1). We granted certiorari to determine
whether a party that supplies a single component of a
multicomponent invention for manufacture abroad can be held liable
for infringement under §271(f)(1). 579 U. S. ___ (2016). We
hold that a single component does not constitute a substantial
portion of the components that can give rise to liability under
§271(f)(1). Because only a single component of the patented
invention at issue here was supplied from the United States, we
reverse and remand.
I
A
We begin with an overview of the patent in
dispute. Although the science behind the patent is complex, a basic
understanding suffices to resolve the question presented by this
case.
The Tautz patent, U. S. Reissue Patent No.
RE 37,984, claims a toolkit for genetic testing.[
1] The kit is used to take small samples of
genetic material—in the form of nucleotide sequences that make up
the molecule deoxyribonu-cleic acid (commonly referred to as
“DNA”)—and then synthesize multiple copies of a particular
nucleotide sequence. This process of copying, known as
amplification, generates DNA profiles that can be used by law
enforcement agencies for forensic identification and by clinical
and research institutions around the world. For purposes of this
litigation, the parties agree that the kit covered by the Tautz
patent contains five components: (1) a mixture of primers that mark
the part of the DNA strand to be copied; (2) nucleotides for
forming replicated strands of DNA; (3) an enzyme known as
Taq polymerase; (4) a buffer solution for the amplification;
and (5) control DNA.[
2]
Respondent Promega Corporation was the exclusive
licensee of the Tautz patent. Petitioner Life Technologies
Corporation manufactured genetic testing kits.[
3] During the timeframe relevant here, Promega
sublicensed the Tautz patent to Life Technologies for the
manufacture and sale of the kits for use in certain licensed law
enforcement fields worldwide. Life Technologies manufactured all
but one component of the kits in the United Kingdom. It
manufactured that component—the
Taq polymerase—in the United
States. Life Technologies shipped the
Taq polymerase to its
United Kingdom facility, where it was combined with the other four
components of the kit.
Four years into the agreement, Promega sued Life
Technologies on the grounds that Life Technologies had infringed
the patent by selling the kits outside the licensed fields of use
to clinical and research markets. As relevant here, Promega alleged
that Life Technologies’ supply of the
Taq polymerase from
the United States to its United Kingdom manufacturing facilities
triggered liability under §271(f)(1).
B
At trial, the parties disputed the scope of
§271(f)(1)’s prohibition against supplying all or a substantial
portion of the components of a patented invention from the United
States for combination abroad. Section 271(f)(1)’s full text
reads:
“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
.”
The jury returned a verdict for Promega, finding
that Life Technologies had willfully infringed the patent. Life
Technologies then moved for judgment as a matter of law, contending
that §271(f)(1) did not apply to its conduct because the phrase
“all or a substantial portion” does not encompass the supply of a
single component of a multicomponent invention.
The District Court granted Life Technologies’
motion. The court agreed that there could be no infringement under
§271(f)(1) because Promega’s evidence at trial “showed at most that
one component of all of the accused products, [the
Taq] polymerase, was supplied from the United States.” 2012
WL 12862829, *3 (WD Wis., Sept. 13, 2012) (Crabb, J.). Section
271(f)(1)’s reference to “a substantial portion of the components,”
the District Court ruled, does not embrace the supply of a single
component.
Id., at *5.
The Court of Appeals for the Federal Circuit
reversed and reinstated the jury’s verdict finding Life
Technologies liable for infringement.[
4] 773 F. 3d 1338, 1353 (2014). As relevant here, the
court held that “there are circumstances in which a party may be
liable under §271(f)(1) for supplying or causing to be supplied a
single component for combination outside the United States.”
Ibid. The Federal Circuit concluded that the dictionary
definition of “substantial” is “important” or “essential,” which it
read to suggest that a single important component can be a
“ ‘substantial portion of the components’ ” of a patented
invention.
Ibid. Relying in part on expert trial testimony
that the
Taq polymerase is a “ ‘main’ ” and
“ ‘major’ ” component of the kits, the court ruled that
the single
Taq polymerase component was a substantial
component as the term is used in §271(f)(1).
Id., at
1356.
II
The question before us is whether the supply
of a single component of a multicomponent invention is an
infringing act under 35 U. S. C. §271(f)(1). We hold that
it is not.
A
The threshold determination to be made is
whether §271(f)(2)’s requirement of “a substantial portion” of the
components of a patented invention refers to a quantitative or
qualitative measurement. Life Technologies and the United States
argue that the text of §271(f)(1) establishes a quantitative
threshold, and that the threshold must be greater than one. Promega
defends the Federal Circuit’s reading of the statute, arguing that
a “substantial portion” of the components includes a single
component if that component is sufficiently important to the
invention.
We look first to the text of the statute.
Sebelius v.
Cloer, 569 U. S. ___, ___ (2013)
(slip op., at 6). The Patent Act itself does not define the term
“substantial,” and so we turn to its ordinary meaning.
Ibid.
Here we find little help. All agree the term is ambiguous and,
taken in isolation, might refer to an important portion or to a
large portion. Brief for Petitioners 16; Brief for Respondent 18;
Brief for United States as
Amicus Curiae 12. “Substantial,”
as it is commonly understood, may refer either to qualitative
importance or to quantitatively large size. See,
e.g.,
Webster’s Third New International Dictionary 2280 (defs. 1c, 2c)
(1981) (Webster’s Third) (“important, essential,” or “considerable
in amount, value, or worth”); 17 Oxford English Dictionary 67
(defs. 5a, 9) (2d ed. 1989) (OED) (“That is, constitutes, or
involves an essential part, point, or feature; essential,
material,” or “Of ample or considerable amount, quantity, or
dimensions”).
The context in which “substantial” appears in
the statute, however, points to a quantitative meaning here. Its
neighboring terms are the first clue. “[A] word is given more
precise content by the neighboring words with which it is
associated.”
United States v.
Williams, 553
U. S. 285, 294 (2008) . Both “all” and “portion” convey a
quantitative meaning. “All” means the entire quantity, without
reference to relative importance. See,
e.g., Webster’s Third
54 (defs. 1a, 2a, 3) (“that is the whole amount or quantity of,” or
“every member or individual component of,” or “the whole number or
sum of”); 1 OED 324 (def. 2) (“The entire number of; the individual
components of, without exception”). “Portion” likewise refers to
some quantity less than all. Webster’s Third 1768 (defs. 1, 3a)
(“an individual’s part or share of something,” or “a part of a
whole”); 12 OED 154, 155 (def. 1a, 5a) (“The part (of anything)
allotted or belonging to one person,” or “A part of any whole”).
Conversely, there is nothing in the neighboring text to ground a
qualitative interpretation.
Moreover, the phrase “substantial portion” is
modified by “of the components of a patented invention.” It is the
supply of all or a substantial portion “of the components” of a
patented invention that triggers liability for infringement. But if
“substantial” has a qualitative meaning, then the more natural way
to write the opening clause of the provision would be to not
reference “the components” at all. Instead, the opening clause of
§271(f)(1) could have triggered liability for the supply of “all or
a substantial portion of . . . a patented invention,
where [its] components are uncombined in whole or in part.” A
qualitative reading would render the phrase “of the components”
unnecessary the first time it is used in §271(f)(1). Whenever
possible, however, we should favor an interpretation that gives
meaning to each statutory provision. See
Hibbs v.
Winn, 542 U. S. 88, 101 (2004) . Only the quantitative
approach does so here. Thus, “substantial,” in the context of
§271(f)(1), is most reasonably read to connote a quantitative
measure.
Promega argues that a quantitative approach is
too narrow, and invites the Court to instead adopt a “case-specific
approach” that would require a factfinder to decipher whether the
components at issue are a “substantial portion” under
either
a qualitative or quantitative test. Brief for Respondent 17, 42. We
decline to do so. Having determined the phrase “substantial
portion” is ambiguous, our task is to resolve that ambiguity, not
to compound it by tasking juries across the Nation with
interpreting the meaning of the statute on an ad hoc basis.
See,
e.g., Robinson v.
Shell Oil Co., 519
U. S. 337 –346 (1997).
As a more general matter, moreover, we cannot
accept Promega’s suggestion that the Court adopt a different
analytical framework entirely—one that accounts for both the
quantitative
and qualitative aspects of the components.
Promega reads §271(f)(1) to mean that the answer to whether a given
portion of the components is “substantial” depends not only on the
number of components involved but also on their qualitative
importance to the invention overall. At first blush, there is some
appeal to the idea that, in close cases, a subjective analysis of
the qualitative importance of a component may help determine
whether it is a “substantial portion” of the components of a
patent. But, for the reasons discussed above, the statute’s
structure provides little support for a qualitative interpretation
of the term.[
5]
Nor would considering the qualitative importance
of a component necessarily help resolve close cases. To the
contrary, it might just as easily complicate the factfinder’s
review. Surely a great many components of an invention (if not
every component) are important. Few inventions, including the one
at issue here, would function at all without any one of their
components. Indeed, Promega has not identified any component
covered by the Tautz patent that would not satisfy Promega’s
“importance” litmus test.[
6]
How are courts—or, for that matter, market participants attempting
to avoid liability—to determine the relative importance of the
components of an invention? Neither Promega nor the Federal Circuit
offers an easy way to make this decision. Accordingly, we conclude
that a quantitative interpretation hews most closely to the text of
the statute and provides an administrable construction.
B
Having determined that the term “substantial
portion” refers to a quantitative measurement, we must next decide
whether, as a matter of law, a single component can ever constitute
a “substantial portion” so as to trigger liability under
§271(f)(1). The answer is no.
As before, we begin with the text of the
statute. Section 271(f)(1) consistently refers to “components” in
the plural. The section is targeted toward the supply of all or a
substantial portion “of the
components,” where “such
components” are uncombined, in a manner that actively
induces the combination of “such
components” outside the
United States. Text specifying a substantial portion of
“components,” plural, indicates that multiple components constitute
the substantial portion.
The structure of §271(f) reinforces this
reading. Section 271(f)(2), which is §271(f)(1)’s companion
provision, reads as follows:
“Whoever without authority supplies or
causes to be supplied in or from the United States any component of
a patented invention that is especially made or especially adapted
for use in the invention and not a staple article or commodity of
commerce suitable for substantial noninfringing use, where such
component is uncombined in whole or in part, knowing that such
component is so made or adapted and intending that such component
will be combined outside of theUnited States in a manner that would
infringe the patent if such combination occurred within the United
States, shall be liable as an infringer.”
Reading §271(f)(1) to refer to more than one
component allows the two provisions to work in tandem. Whereas
§271(f)(1) refers to “components,” plural, §271(f)(2) refers to
“any component,” singular. And, whereas §271(f)(1) speaks to
whether the components supplied by a party constitute a substantial
portion of the components,§271(f)(2) speaks to whether a party has
supplied “any” noncommodity component “especially made or
especially adapted for use in the invention.”
We do not disagree with the Federal Circuit’s
observation that the two provisions concern different scenarios.
See 773 F. 3d, at 1354. As this Court has previously observed,
§§271(f)(1) and 271(f)(2) “differ, among other things, on the
quantity of components that must be ‘supplie[d] . . .
from the United States’ for liability to attach.”
Microsoft
Corp. v.
AT&T Corp., 550 U. S. 437, 454, n. 16
(2007) . But we do not draw the Federal Circuit’s conclusion from
these different but related provisions. Reading §271(f)(1) to cover
any single component would not only leave little room for
§271(f)(2), but would also undermine §271(f)(2)’s express reference
to a single component “especially made or especially adapted for
use in the invention.”[
7] Our
conclusion that §271(f)(1) prohibits the supply of components,
plural, gives each subsection its unique application.[
8] See,
e.g., Cloer, 569
U. S., at ___ (slip op.,at 6).
Taken alone, §271(f)(1)’s reference to
“components” might plausibly be read to encompass “component” in
the singular. See 1 U. S. C. §1 (instructing that “words
importing the plural include the singular,” “unless the context
indicates otherwise”). But §271(f)’s text, context, and structure
leave us to conclude that when Congress said “components,” plural,
it meant plural, and when it said “component,” singular, it meant
singular.
We do not today define how close to “all” of the
components “a substantial portion” must be. We hold only that one
component does not constitute “all or a substantial portion” of a
multicomponent invention under §271(f)(1). This is all that is
required to resolve the question presented.
C
The history of §271(f) bolsters our
conclusion. The Court has previously observed that Congress enacted
§271(f) in response to our decision in
Deepsouth Packing Co.
v.
Laitram Corp., 406 U. S. 518 (1972) . See
Microsoft Corp., 550 U. S., at 444. In
Deepsouth, the Court determined that, under patent law as it
existed at the time, it was “not an infringement to make or use a
patented product outside of the United States.” 406 U. S., at
527. The new §271(f) “expand[ed] the definition of infringement to
include supplying from the United States a patented invention’s
components,” as outlined in subsections (f)(1) and (f)(2).
Microsoft, 550 U. S., at 444–445.
The effect of this provision was to fill a gap
in the enforceability of patent rights by reaching components that
are manufactured in the United States but assembled overseas and
that were beyond the reach of the statute in its prior formulation.
Our ruling today comports with Congress’ intent. A supplier may be
liable under§271(f)(1) for supplying from the United States all or
a substantial portion of the components (plural) of the invention,
even when those components are combined abroad. The same is true
even for a single component under §271(f)(2) if it is especially
made or especially adapted for use in the invention and not a
staple article or commodity. We are persuaded, however, that when
as in this case a product is made abroad and all components but a
single commodity article are supplied from abroad, this activity is
outside the scope of the statute.
III
We hold that the phrase “substantial portion”
in 35 U. S. C. §271(f)(1) has a quantitative, not a
qualitative, meaning. We hold further that §271(f)(1) does not
cover the supply of a single component of a multicomponent
invention. The judgment of the Court of Appeals for the Federal
Circuit is therefore reversed, and the case is remanded for further
proceedings consistent with this opinion.
It is so ordered.
The Chief Justice took no part in the decision
of this case.
