Patent royalties curbed as US Supreme Court backs Thermo Fisher

The unanimous ruling is a defeat for Promega , which claimed Thermo Fisher’s Life Technologies infringed a patent covering genetic testing kits


Promega had sued Thermo Fisher Scientific Inc.’s  Life Technologies unit claiming it was selling the genetic testing kits to clinical and research markets outside the licensed fields.
Promega had sued Thermo Fisher Scientific Inc.’s Life Technologies unit claiming it was selling the genetic testing kits to clinical and research markets outside the licensed fields.

Washington: The US Supreme Court put new limits on patent royalties, ruling that Thermo Fisher Scientific Inc.’s Life Technologies unit doesn’t owe damages for supplying one component of a patented invention that was put together overseas.

The unanimous ruling Wednesday is a defeat for Promega Corp., which claimed Life Technologies infringed a patent covering genetic testing kits.

The decision reverses a federal appeals court ruling that had said Promega was entitled to damages for infringement of one of five disputed patents. Promega at one point won a $52 million jury verdict in the dispute.

Promega sold Life Technologies a license to make and sell genetic testing kits for specified law enforcement fields. Four years into the agreement, Promega sued, claiming Life Technologies was selling the kits to clinical and research markets outside the licensed fields.

At the Supreme Court, the question was whether Life Technologies could be held liable in the US even though it manufactured all but one of the components of the kits in the UK. Federal patent law says companies that don’t hold a license can be sued for supplying “from the US all or a substantial portion of the components of a patented invention” that’s assembled overseas.

Writing for the court, justice Sonia Sotomayor said a single component didn’t meet that definition.

The disputed provision “consistently refers to ‘components’ in the plural,” Sotomayor wrote. “Text specifying a substantial portion of ‘components,’ plural, indicates that multiple components constitute the substantial portion.”

She said the court’s ruling was a limited one that didn’t decide how many components were required to meet the definition.

The case is Life Technologies v. Promega, 14-1538. Bloomberg

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