Washington, DC 2/22/17—The US Supreme Court has issued a ruling in favor of Thermo Fisher Scientific and against Promega as part of a 2010 patent infringement suit brought by Promega. The ruling reverses a US Court of Appeals for the Federal Circuit decision that found Thermo Fisher liable for damages. The case centered on the section of the US Patent Act, that, as the Court wrote, “prohibits the supply from the United States of ‘all or a substantial portion of the components of patented invention’ for combination abroad.’” Promega alleged that Thermo Fisher (then Life Technologies) infringed US Reissue Patent No. RE 37,984 (Process for Analyzing Length Polymorphisms in DNA Regions), sublicensed to Thermo Fisher by Promega, by manufacturing the Taq polymerase in the US and shipping it to the UK for assembly of a five-component PCR kit. The Court determined that the statute referred to the quantity of the components rather than the quality, as Promega had argued. Neither company issued an official statement.

The original suit, filed in 2010 by Promega, alleged infringement of five patents by Life Technologies for selling the licensed technology outside the specified fields of law enforcement. In 2012, a jury’s $52 million award to Promega (see IBO 2/29/12) was overturned by the district court (see IBO 9/15/12), stating there should be no damages for foreign sales because one component does not constitute a “substantial portion.” An appeals court found the four other patents invalid but found evidence of infringement of the US Reissue Patent No. RE 37,984, ruling that a single component could constitute “a substantial portion” and assigned the case to a new trial (see IBO 2/28/15). However, in June 2015, the case was stayed. Thermo Fisher filed a petition with the Supreme Court to hear the case.