The US Supreme Court recently ruled that a product must contain more than one American-made product (no matter how important) in order to trigger potential liability under US patent law.
The unanimous Supreme Court decision settled a biotech licensing dispute between Life Technologies Corp. and Promega Corp. over DNA testing kits made and sold in the UK The court rejected Promega’s claim that the single component it licensed to Life Tech for the kits was sufficient to trigger an infringement claim.
John Morrow, Chair of Womble Carlyle’s Intellectual Property Litigation Group, discussed the case with the Westlaw Journal. He said the ruling demonstrates the necessity of having international patent portfolios.
“The court appears to have opened the door for companies to avoid infringement of a US patent even if they supply the most important or novel component of an invention overseas knowing that it will be used as part of a combination to practice or form the patented invention,” he said.
Click here to read “Patent Act Liability Needs More Than One US-Made Component, Justices Say,” in the Westlaw Journal.
John Morrow currently chairs Womble Carlyle’s Intellectual Property Litigation Group, where for over two decades he has focused his practice on handling all aspects of patent infringement, trademark infringement, unfair competition, copyright infringement, trade secret misappropriation, false advertising, antitrust lawsuits, and data breach/cybersecurity lawsuits and investigations. He practices in the firm’s Winston-Salem, N.C. office.