Patents

Life Technologies v. Promega: One Component Is Not a 'Substantial Portion' Abroad

The Supreme Court holds that supplying a single commodity component from the United States cannot trigger §271(f)(1) liability, reading 'substantial portion' as a quantitative measure.

June 17, 2025
Laboratory genetic testing kit with reagent vials
Life Technologies confined §271(f)(1) to multiple-component supply, sparing the export of one ordinary part. Shutterstock
Educational content, not legal advice. This article explains general legal concepts. It does not create an attorney–client relationship. For your specific situation, consult a licensed attorney.

In Life Technologies Corp. v. Promega Corp., No. 14-1538 (U.S. Feb. 22, 2017), the Supreme Court resolved a question that had quietly divided patent practitioners since §271(f) was enacted: can shipping a single component of a multi-component invention from the United States, for assembly into the finished invention abroad, expose the supplier to U.S. patent liability? Argued December 6, 2016, and decided February 22, 2017, the Court answered no, unanimously reversing the Federal Circuit. Justice Sotomayor wrote for the Court; Justice Alito, joined by Justice Thomas, concurred in part and in the judgment. Chief Justice Roberts took no part. The holding turned on three words—“a substantial portion of the components”—and the Court’s conclusion that they impose a quantitative, not qualitative, threshold.

At a glance

  • Case: Life Technologies Corp. v. Promega Corp., No. 14-1538
  • Court: Supreme Court of the United States
  • Argued / Decided: December 6, 2016 / February 22, 2017
  • Vote: 7-0 (reverse and remand)
  • Majority: Sotomayor, J.
  • Separate opinion: Alito, J., concurring in part and concurring in the judgment, joined by Thomas, J.
  • Not participating: Roberts, C.J.
  • Holding: Section 271(f)(1)‘s phrase “a substantial portion of the components” is quantitative; the supply of a single component does not qualify, so exporting one component for combination abroad cannot, by itself, create liability.

Promega held rights in a patent covering a genetic-testing toolkit—a multiplex assay used in forensic and clinical work—comprising five components. Life Technologies manufactured one of those components, the Taq polymerase enzyme, in the United States and shipped it to the United Kingdom, where the remaining four components were made and the kits were assembled and sold worldwide. Promega sued under §271(f)(1), contending that supplying the enzyme from the U.S. for combination abroad was infringement. A jury found for Promega, the district court granted judgment as a matter of law to Life Technologies, and the Federal Circuit reinstated the verdict, holding that a single important component could be a “substantial portion.” The Supreme Court reversed.

The text: §271(f)(1) versus §271(f)(2)

Congress wrote §271(f) in two parts, and the structure proved decisive. Subsection (f)(1) reaches a supplier who provides “all or a substantial portion of the components of a patented invention” in a manner actively inducing combination abroad. Subsection (f)(2) reaches a supplier of even a single component that is “especially made or especially adapted for use in the invention and not a staple article or commodity of commerce.” Promega had pursued only (f)(1).

That choice mattered because the two subsections divide the field by reference to different concerns. Subsection (f)(2) already addresses the single-component scenario—but only for non-staple, specially adapted components, and only with a heightened intent requirement. Reading (f)(1)‘s “substantial portion” to capture any single important component, the Court reasoned, would swallow (f)(2) and erase the careful gradations Congress built. A staple commodity supplied alone would escape (f)(2) by definition, yet fall within (f)(1)—an outcome that would render (f)(2)‘s “especially made” limitation meaningless.

Quantitative, not qualitative

The crux was whether “substantial portion” measures number (a quantitative reading) or importance (a qualitative reading). The Federal Circuit had taken the qualitative path, treating the Taq polymerase as substantial because it was central to the kit’s function, even though it was only one of five parts and a commodity available off the shelf.

The Supreme Court rejected that approach. Reading “substantial” in context, the Court emphasized the neighboring words: the statute speaks of “a substantial portion of the components”—a phrase that takes its meaning from a count of parts, not an assessment of each part’s significance. Had Congress meant importance, it would more naturally have written “a substantial component” or referred to the invention’s central element. The plural “components” anchored the inquiry in quantity. The Court declined to adopt a case-by-case qualitative test, which would have required courts and juries to rank the relative importance of every part of an invention—an unworkable and indeterminate exercise that would generate uncertainty for global suppliers.

Having settled on a quantitative reading, the Court took the modest further step the case required: whatever the precise floor for “a substantial portion,” a single component does not meet it. The statutory phrase, read as a count, necessarily contemplates more than one. The Court expressly declined to decide how many components short of “all” suffice—only that one is not enough. The presumption against extraterritoriality reinforced the result: §271(f) is a deliberate but bounded extension of U.S. patent law to conduct abroad, and an expansive single-component reading would push that extension well past the line Congress drew.

What the Court left open—and the concurrence

Justice Alito, joined by Justice Thomas, agreed that one component is not a substantial portion but wrote separately to underscore the limits of the holding. He cautioned that the majority had not decided that more than one component is always sufficient; “a substantial portion” still requires a substantial quantity, and two components out of many might not qualify. His concurrence also flagged that §271(f)(1) requires the supply to occur with an eye toward “active inducement” of combination abroad, a requirement that itself constrains the provision independent of the component count.

The practical effect of the decision is to channel single-component cases into §271(f)(2), where liability requires both that the exported component be specially adapted (not a commodity) and that the supplier act with the requisite intent. For a commodity like Taq polymerase, that route was closed—and so Promega’s theory failed entirely.

Open questions

  • How many components are “a substantial portion”? The Court fixed only the floor (one is too few) and declined to set a number, leaving lower courts to calibrate the threshold above one.
  • How is the denominator counted? Whether “components” are counted as discrete parts, by subassemblies, or by some functional unit can change whether a given supply clears the bar.
  • Does the quantitative rule fit chemical and biotech inventions? Counting “components” is intuitive for machines but contestable for compositions, reagent kits, and processes.
  • What work does intent do? Because (f)(1) requires active inducement of combination abroad, the interaction between the quantitative threshold and the intent element remains underexplored.

Implications

  • U.S. manufacturers may export a single commodity component for foreign assembly without §271(f)(1) exposure, a meaningful safe harbor for suppliers of reagents, chemicals, and standard parts.
  • Patent owners pursuing single-component exports must satisfy §271(f)(2)‘s stricter “especially made or especially adapted” and intent requirements, which commodity components rarely meet.
  • The decision sharpens the divide between (f)(1) (multiple components) and (f)(2) (one specially adapted component), discouraging pleading single-component cases under (f)(1).
  • The quantitative rule supplies a clearer, if incomplete, line for global supply-chain planning, reducing the risk that a single U.S.-sourced part anchors worldwide damages.
  • Together with Microsoft v. AT&T, the case confirms a narrowing trajectory for §271(f), with the extraterritoriality presumption guiding close calls.

Frequently asked questions

What does “substantial portion” mean after this case? It is a quantitative measure of the number of components supplied, not a judgment about how important any one component is. A single component is categorically not enough.

Could Promega have won under a different theory? Possibly under §271(f)(2), which reaches a single component—but only if that component were specially made or adapted for the invention and not a commodity. The Taq polymerase was a staple article, so that route was unavailable.

Did the Court say how many components are required? No. It held only that one is insufficient and expressly declined to identify the precise number that constitutes “a substantial portion.”

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