Shipment Of Single Important Component To Party’s Own Foreign Manufacturing Facility Constitutes Inducement Under § 271(f)(1)

In Promega Corp. v. Life Technologies Corp., Nos. 13-1011, -1029, -1376 (Fed. Cir. Dec. 15, 2014), the Federal Circuit reversed the district court's finding that four asserted patents were not invalid for lack of enablement, reversed the district court's grant of JMOL of noninfringement of U.S. Patent No. RE37,984 ("the Tautz patent"), affirmed the district court's finding that certain sales by Life Technologies Corp. ("LifeTech") fell outside the scope of the cross license, vacated the jury's damages award, and remanded for a new trial on damages.

Promega Corp. ("Promega") owns U.S. Patent Nos. 5,843,660 ("the '660 patent"); 6,221,598 ("the '598 patent"); 6,479,235 ("the '235 patent"); and 7,008,771 ("the '771 patent") (collectively "the Promega patents"), and is the exclusive licensee of the Tautz patent. The Promega patents claim methods and kits for simultaneously determining alleles present in a set of short tandem repeat ("STR") loci from DNA samples. The claims of the Promega patents recite "a set of . . . loci" followed by either the transitional phrase "consisting of"—the so-called "closed loci set" claims—or "comprising"—the so-called "open loci set" claims. Slip op. at 6-7. The Tautz patent is also directed to a process for examining polymorphism in DNA samples. LifeTech manufactures genetic testing kits that provide components for carrying out a multiplex amplification of STR loci from DNA samples. Each of these kits is designed to co-amplify STR loci, including the loci listed in the asserted claims of the Promega patents as well as loci that are not listed in the claims. The kits contain a primer mix, a Taq polymerase, a PCR reaction mix, a buffer solution, and control DNA. LifeTech manufactures the Taq polymerase in the United States and ships it to a LifeTech manufacturing facility in the United Kingdom, which assembles and sells the kits worldwide.

Promega and Applied Biosystems, LLC ("Applied Biosystems"), a wholly owned subsidiary of LifeTech, entered into a cross license agreement that granted Applied Biosystems the right to use the alleged inventions in the Promega and Tautz patents for "Forensics and Human Identity Applications." Id. at 9. The cross license also limited Applied Biosystems use to, among other things, activities relating to legal proceedings.

Promega sued LifeTech for infringement of the Promega and Tautz patents, alleging that LifeTech sold STR kits not covered by the cross license. The district court...