Justices to Decide |Dispute Over DNA Patents

     (CN) — The Supreme Court agreed Monday to hear a patent-infringement case centered on DNA testing kits used to analyze genetic differences between people.
     Promega Corp. owns four patents, and exclusively licenses a fifth, related to “short tandem repeats” in DNA sequences, or STR loci.
     The patents deal with methods or kits for determining the alleles — or markers for genetic variations — in a set of STR loci from a DNA sample.
     Promega is the exclusive licensee of a patent about a process for examining genetic differences between people in DNA samples, referred to in court documents as the “Tautz patent.”
     Life Technologies Corp., or LifeTech, makes genetic testing kits “for carrying out a multiplex amplification of STR loci from DNA samples,” court records show. The kits are sometimes used by police for forensic identification, and by researchers for the analysis of cancer cells.
     Promega sued LifeTech in 2010 for patent infringement, accusing it of selling STR testing kits not covered by a 2006 cross license between Promega and LifeTech subsidiary Applied Biosystems.
     A jury found that LifeTech willfully infringed Promega’s patents and determined that Promega was entitled to $52 million in lost profits.
     However, the district court granted LifeTech’s motion for judgment notwithstanding the verdict based on Promega’s failure to prove applicable damages, and vacated the finding of infringement.
     Both companies appealed. A divided Federal Circuit ruled in December 2014 that LifeTech is liable for infringement of the licensed patent.
     “We conclude that the asserted claims of the Promega patents are invalid for lack of enablement. We also find substantial evidence that LifeTech is liable for infringement of the Tautz patent,” Judge Raymond Chen wrote. “Finally, we affirm the district court’s finding that the 2006 Cross License does not cover all of Life- Tech’s sales of the accused products. We therefore reverse the grant of LifeTech’s motion for JMOL and remand to the district court for a determination of damages based on LifeTech’s infringement of the Tautz patent.”
     LifeTech petitioned the U.S. Supreme Court for review last summer, arguing that the Federal Circuit misinterpreted the law when it found Promega was entitled to damages LifeTech’s worldwide testing-kit sales “even though the only connection between Life Technologies’ foreign sales and the United States was that Life Technologies shipped a single, commodity component of the kits from its facility in the United States to its own manufacturing facility abroad.”
     “First, the court held that a single, integrated entity can ‘actively induce’ itself to infringe a patent by shipping a component to its own overseas facilities. Second, the court held that a single, commodity component of a multi-component invention can be ‘a substantial portion of the components,'” the petition states. “Each of these serious errors warrants this Court’s review. The combination dangerously expands the extraterritorial reach of U.S. patent law.”
     The high agreed Monday to hear the case. Per its custom, it did not comment on its decision to take up the dispute.
     The Supreme Court’s review will be limited to whether supplying a single, commodity component of a multi-component invention from the United States is an infringing act under patent law that would expose a manufacturer to liability for worldwide sales.

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