In what should be regarded as a win for US industry, the US Supreme Court has just handed down a decision that lets sanity prevail in a long-running patent infringement battle.

Briefly, Life Technologies manufactured and exported a component (an important enzyme) for DNA testing kits, which were then assembled in the UK and on-sold. A competitor, Promega, alleged that the export of that component for use in an ‘infringing’ product overseas infringed its US patent.

Broadly speaking, to infringe a patent each essential part of a patent claim needs to be taken by the infringer. So the supply of one component, which only forms one part of a broader patent claim, would not be patent infringement… but this is the US. After a Supreme Court decision back in the 1970’s US Congress tried to close a ‘loop-hole’, and included a section in the Patent Code that related to the export of components which form “all or a substantial” portion of a patent product.

The Court determined that the “ambiguous” term substantial should be determined in a quantitative, rather than qualitative manner, i.e. what proportion of components you supply rather than how important they are to the invention. That meant Life Technologies' export of a single component was not patent infringement.

Australia and New Zealand do not have equivalent prescriptive provisions in their patent legislation, but do have prohibitions on contributory or secondary infringement which traders in this part of the world still need to be aware of.

The Supreme Court decision will come as a relief to many US manufacturers as it had the potential to seriously impact their businesses. No doubt, the Donald will attempt to take credit for orchestrating the whole thing, sad!