Search SciPol

Brought to you by
February 23, 2017

Patent royalties curbed as Supreme Court backs Thermo Fisher

  • Judicial
  • Genetics/Genomics

The Boston Globe – The US Supreme Court put new limits on patent royalties, ruling that Waltham-based 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 U.K. Federal patent law says companies that don’t hold a license can be sued for supplying ‘‘from the United States 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.

Image citation: 350z33, CC BY-SA 3.0