Promega Corp. loses patent case before U.S. Supreme Court

Promega Corp. loses patent case before U.S. Supreme Court


WASHINGTON — Fitchburg-based Promega Corp. was handed a defeat Wednesday by the U.S. Supreme Court, which ruled in favor of a California firm in a patent infringement case that limits the international reach of U.S. patent laws.

The justices ruled unanimously that a shipment by Life Technologies Corp. of a single part of a patented invention for assembly in another country did not violate patent laws.

Life Technologies supplied an enzyme used in DNA analysis kits to a plant in London and combined it with several other components to make kits sold worldwide. Promega sued, arguing that the kits infringed a U.S. patent.

A jury awarded $52 million in damages to Promega, but U.S. District Judge Barbara Crabb set aside the verdict, saying the law did not cover export of a single component.

The federal appeals panel specializing in patent cases reversed and reinstated the verdict, though not the damages. Instead, it ordered a new trial. Crabb stayed the case while the Supreme Court decided whether it would take the matter.

“We are pleased to have additional clarity around this area of the law. We respect the process and appreciate the effort that goes into making these decisions,” Daniel Ghoca, Promega general counsel, said in an email. “The parties will now turn back to the lower court to determine the revised scope of Life Technologies’ patent infringement and damages due to Promega.”

Patent laws are designed to prevent U.S. companies from mostly copying a competitor’s invention and simply completing the final phase overseas to skirt the law. A violation occurs when “all or a substantial portion of the components of a patent invention” are supplied from the United States to a foreign location.

Writing for the high court, Justice Sonia Sotomayor said the law addresses only the quantity of components, not the quality. That means the law “does not cover the supply of a single component of a multicomponent invention,” Sotomayor said.

Only seven justices took part in the ruling. Chief Justice John Roberts heard arguments in the case, but later withdrew after discovering he owned shares in the parent company of Life Technologies.

Ron O’Brien, spokesman for Thermo Fisher Scientific, parent company of Life Technologies, declined to comment on the decision.


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