Federal Circuit Review - Issue 37

Specific Claim Limitation That Uses "Comprising" in an Unpredictable Art May Not Be Enabled; and "Active Inducement" Under § 271(f)(1) Does Not Require a Third Party.

Promega Corp. v. Life Techs. Corp., No. 2013-1011, -1029, -1376, 2014 U.S. App. LEXIS 23482 (Fed. Cir. Dec. 15, 2014) (Chen, J.) (Prost, C.J., dissenting). Click Here for a copy of the opinion.

Promega sued Life Technologies on five patents related to a forensic DNA identification technique known as "short tandem repeat"(STR) profiling.

Promega alleged direct infringement in the US, and also alleged indirect infringement under § 271(f)(1), because Life Technologies shipped one component of the accused STR kits (a polymerase used for the amplification reactions) from the US to the UK, where the kit was then assembled and sold worldwide. Life Technologies argued that these shipments did not infringe under this statute, because it shipped a single component to itself and not to someone else. Additionally, it said that the exported polymerase was not "all or a substantial portion of the components of a patented invention" as the statute requires.

STR profiling counts the number of times a particular DNA sequence is repeated at selected genome locations called STR loci. This count can vary among individuals, creating distinct patterns called "alleles," or markers, of a particular locus. A particular set of alleles at multiple loci within an individual's DNA can be used to create a DNA "fingerprint" unique to that individual. From a DNA sample, multiple copies of the DNA at each STR locus in a set of multiple loci are made, in a process called "amplification." Promega's patents relate to a co-amplification method that uses primer pairs to copy DNA at multiple STR loci simultaneously and (importantly) without overlap or interference between the primer pairs for different targeted loci.

More specifically, some of the patent claims recited a kit for analyzing STR repeats in STR loci from a DNA sample comprising a container containing primers for each locus in a set of STR loci which can be co-amplified, comprising three specified STR loci (HUMCSF1PO, HUMTPOX, and HUMTH01). The district court concluded that Promega's second use of the word "comprising" in the "a set of . . . loci" limitation covered not only the three loci recited in the claim, but also any other loci combination containing those three recited loci.

On summary judgment, the district court rejected Life Technologies'...