For our weekly SoCal IP Institute meeting on Monday, February 27, 2017, we will discuss the following:

Life Technologies Corp et. al. v. Promega Corp., No. 14-1538 (S.Ct. February 22, 2017) (available here).  Life Technologies sublicensed Promega’s patent that related to a toolkit for genetic testing. Life Technologies then shipped one of the five components of the toolkit to the United Kingdom to combine with the four other components of the toolkit. Promega sued Life Technologies for patent infringement under 35 U.S.C. 271(f)(1), which states, “Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.” The Federal Circuit held that a single component could constitute a “substantial portion” of an invention under 271(f). However, the Supreme Court reversed finding that a single component could not constitute a “substantial portion” thereby determining there would be no liability under 271(f).

Design Data Corp. v. Unigate Enterprises, Inc., No. 14-16701 (9th Cir. February 9, 2017)  (available here). Design Data Corp sued Unigate alleging copyright infringement for downloading an unauthorized copy of the program and distributing the output generated by the program. The district court granted Unigate’s summary judgment motion finding that the copyright did not extend to the output generated by the program. The 9th Circuit affirmed in part and reversed in part the district court’s ruling.

All are invited to join us on Monday, February 27, 2017, at noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Elisha Manzur by 9 am Monday morning.