Here’s a seemingly sure-fire way to avoid violating US patent laws: just don’t make or use your product in the US. Pretty straightforward, right? Maybe not, in the age of modern supply chains and manufacturing. Today, the US Supreme Court takes up a case that will determine how much help an overseas manufacturer can get from the US without running afoul of US patent laws.
The case originates in a dispute between two competitors in the field of genetic testing. Both Promega Corporation and Life Technologies (selling through its Applied Biosciences brand) make DNA testing kits that can be used in a variety of fields, including forensic identification, paternity testing, medical treatment, and research. Promega licensed several patents to Applied Biosystems that allowed its competitor to sell kits for use in “Forensics and Human Identity Applications.” The license forbade sales for clinical or research uses. In 2010, Promega filed a lawsuit in federal court, saying that Life Technologies had “engaged in a concerted effort to sell its kits into unlicensed fields,” thus infringing its patents.
A Wisconsin federal jury found that Life Tech had willfully infringed and should pay $52 million in damages. But the district judge overseeing the case set aside that verdict after trial, ruling that since nearly all of the Life Tech product had been assembled and shipped from outside the US, the product wasn’t subject to US patent laws.
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