is an associate in in the San Francisco office of Baker Botts. Her practice focuses on complex, high-tech litigation in Federal Courts, the International Trade Commission, and the Patent Trial and Appeal Board.
The facts of the underlying case were incredibly simplistic and not representative of a typical patent infringement case involving complex technologies. The parties agreed that the exported product consisted of one of five total “components of the patented invention,” so the Court did not address “how identify the ‘components’ of a patent or whether and how that inquiry relates to the elements of a patent claim.” Id. at FN2. Addressing the issue in a case with minimal real-world applicability does little to help the finder of fact determine whether a product contains one or multiple components of a patented invention. The decision in Promega does not relieve manufacturers from the risk that their single-part product could be used inadvertently to infringe a U.S. Patent overseas. When disputes arise under § 271(f), defendants will need to build strong evidence showing that their product only contains one component to avoid infringement, while plaintiffs will be crafting arguments that the total number of patented components is low and the exported product contains multiple components.