Under section 271(b) of the Patent Act, a defendant in a patent infringement lawsuit may be held liable for inducing the infringement of a patent, i.e., causing another person to directly infringe a patent. However the language of the statute is not clear as to what conduct or intent is required for one to be liable for inducing infringement. Section 271(b) simply provides: "Whoever actively induces infringement of a patent shall be liable as an infringer."
The U.S. Supreme Court recently grappled with the meaning of
Section 271(b) in Global Tech Appliances, Inc. v. SEB
S.A., U.S., No. 10-6, 5-31-2011, acknowledging that the
statutory language regarding induced infringement is ambiguous, and
attempting to clarify the requirements for liability under this
section.
In Global Tech, defendant was accused of inducing
infringement of a patent for an innovative deep fryer owned by SEB
S.A. Defendant had purchased an SEB fryer in Hong Kong (thus it
lacked U.S. patent markings), copied all of the fryer's
features except for cosmetics, retained an attorney to conduct a
right-to-use study without telling the attorney that it had copied
SEB's design, and ultimately sold its fryers to companies that
then resold them in the United States. A jury found defendant
liable for inducing infringement and the Federal Circuit affirmed,
stating that one may be liable for induced infringement where he
"knew or should have known that his actions would
induce actual infringements." At issue before the Supreme
Court was whether the standard applied for finding induced
infringement (i.e., that defendant knew or should have
known) was appropriate.
In considering Section 271(b), the Court explained that the phrase
"induces infringement" could merely require that
"the inducer lead another to engage in conduct that
happens to amount to infringement," (i.e., no knowledge
that the induced act constitutes infringement) or "the
inducer must persuade another to engage in conduct that the inducer
knows is an infringement." (Emphasis added.) In other
words, as the Court pointed out, the statute fails to give any
indication as to what, if any, intent is required for a defendant
to be liable for inducing patent infringement.
After considering case law pre-dating enactment of the law on
contributory patent infringement (including induced infringement)
and finding it conflicting, the Court turned its attention to its
decision in Aro Mfg. Co. v. Convertible Top Replacement
Co., 377 U.S. 476 (1964) ("Aro II"). In
Aro II, the Court determined the intent required for
contributory infringement under Section 271(c). Under Section
271(c), a party is liable for patent infringement where it
"offers to sell or sells . . . a component of a patented
[invention] . . ., constituting a material part of the invention,
knowing the same to be especially made or especially adapted
for use in an infringement of such patent . . . ." In
Aro II, the Court concluded that for contributory
liability to attach under Section 271(c), knowledge of the
existence of the patent that is infringed is necessary.
Based on the Aro II decision and the fact that Section
271(b) and 271(c) incorporate a similar ambiguity as to intent, the
Court concluded in Global Tech that the same knowledge
standard for contributory infringement under Section 271(c) is
necessary for induced infringement under Section 271(b). Thus, the
Court held that "induced infringement under § 271(b)
requires knowledge that the induced acts constitute patent
infringement." A "deliberate indifference to a known risk
that a patent exists is not the appropriate standard under §
271(b)."
The analysis does not end there however. The next step is the
determination of what constitutes "knowledge" for
liability for inducing infringement. Despite finding a
"deliberate indifference" insufficient to meet this
knowledge requirement, Global Tech Court went on to affirm
the lower court rulings against the defendant in this case finding
that the evidence was sufficient to support a finding of knowledge
based on the defendant's "willful blindness." The
Court reviewed the history of the doctrine of willful blindness and
concluded that for the doctrine to apply, two requirements must be
met: "(1) the defendant must subjectively believe that there
is a high probability that a fact exists and (2) the defendant must
take deliberate actions to avoid learning of that fact." In
justifying the imposition of liability based on a defendant's
willful blindness, the Court distinguished willful blindness from
recklessness and negligence explaining: "a willfully blind
defendant is one who takes deliberate actions to avoid confirming a
high probability of wrongdoing and who can almost be said to have
actually known of the critical facts."
In Global Tech, the facts that sufficed to amount to
willful blindness for liability for inducing infringement included
defendant's decision to copy an overseas model of SEB's
fryer (lacking patent markings) and its failure to inform its
attorney from whom it sought a right-to-use opinion of that fact.
Based on these facts, the Court concluded that defendant
"subjectively believed there was a high probability that
SEB's fryer was patented, that [defendant] took deliberate
steps to avoid knowing that fact, and that it therefore willfully
blinded itself to the infringing nature of [purchasers']
sales."
In summary, under the Court's Global Tech decision,
one may be liable for inducing infringement if he knew that the
acts induced constitute an infringement. While a deliberate
indifference to a known risk that a patent exists is insufficient
to demonstrate induced infringement, willful blindness is
enough.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.