United States: Instructional Materials Not Always Sufficient To Show Induced Infringement

In a recent Initial Determination, Administrative Law Judge Shaw concluded that the Complainant's reliance on marketing and instructional materials was not sufficient to prove inducement of infringement of a claimed method.

Summary

On September 1, 2017 Administrative Law Judge ("ALJ") Shaw issued an Initial Determination ("ID") in Certain Magnetic Data Storage Tapes and Cartridges Containing the Same, Inv. No. 337-TA-1012. In the ID, ALJ Shaw concluded that certain magnetic tape media for data storage imported by Sony violated 19 U.S.C. § 1337 with respect to two of the five patents asserted by Fujifilm.  In particular, he concluded that Sony violated 19 U.S.C. § 1337 with respect to U.S. Patent Nos. 6,641,891 and 6,767,612 but not with respect to U.S. Patent Nos. 6,703,106, 8,236,434, and 7,355,805.

While ALJ Shaw makes several findings with respect to each of the asserted patents, of particular interest are his findings concerning induced infringement of claims 9-11 of U.S. Patent No. 6,767,612 and claim 1 of 6,703,106.  The claims at issue in both patents are directed to methods for recording and reproducing data on a magnetic tape cartridge.  To prove induced infringement, Fujifilm asserted that Sony, with knowledge of the patents, provided marketing and instructional materials for its magnetic tape cartridges to customers and that the instructional materials demonstrated that Sony intended its customers to record data onto the magnetic tape cartridge.

Although ALJ Shaw concluded that the evidence was sufficient to show that Sony's customer's infringe the relevant method claims of the patents, he concluded that the evidence (specifically, a Sony Specification Sheet) was not sufficient to conclude Sony induced that infringement.

He found that the Sony Specification Sheet "[did] not provide a sufficient basis to conclude that Sony induces infringement because the sheet does not instruct, direct, or advise customers on how to perform the claimed method." See Arris Group v. British Telecomm. PLC, 639 F.3d 1368, 1379 n.13 (Fed. Cir. 2011) ("Section 271(b) covers active inducement of infringement, which typically includes acts that intentionally cause, urge, encourage, or aid another to directly infringe a patent")."  According to ALJ Shaw, Fujifilm had not shown that it was Sony's specific intent to infringe the patent. See Commil USA,LLC v. Cisco Sys., 1nc., 135 S. Ct. 1920, 1928 (2015) ("Section 271(b) requires that the defendant 'actively induce[d] infringement.' That language requires intent to 'bring about the desired result,' which is infringement"); see also Global-Tech Appliances, Inc, v. SEB S.A., 131 S. Ct. 2060 (2011).

Takeaway

As this case demonstrates, litigants at the ITC need to be mindful of the requirements for proving induced infringement.  Complainants asserting induced infringement should consider how to obtain the evidence necessary to demonstrate the necessary specific intent to infringe the patent and Respondents should be mindful of this burden and seek to challenge a Complainant's failure to meet the necessary burden.

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