United States: Mitigating Risk Of Liability For Induced Infringement In A Global Economy

U.S. technology companies often design products in the United States and then manufacture and sell those products overseas. In the semiconductor and integrated-circuits arena, in particular, companies frequently design chips and components in technology hubs like Silicon Valley, and then manufacture and sell them overseas to end-product manufacturers who incorporate them into consumer products like phones, tablets, and computers.

One area in which this business model can clash with U.S. law is in the field of patents. As explained in this article, chief technology officers and others on the design and product documentation side can play a key role in mitigating the risk of patent infringement should some of those consumer end products eventually be imported into the United States.

Whether a company may be liable for patent infringement based on products manufactured overseas hinges on what happens post-manufacture. If the company imports the product into the U.S., it could be liable for direct infringement. On the other hand, if the company sells the product overseas and it remains there, there's no infringement. That's because, under U.S. patent law, infringement occurs only when someone, without permission from the patent owner, makes, uses, offers to sell, sells, or imports the patented invention within the United States.1

A more difficult scenario arises when, as is frequently the case with ICs and components, the product is sold to an end-product manufacturer overseas and it's incorporated into a consumer product that's then imported into the United States. The design company may not be liable for direct infringement because sale of the IC or component occurred overseas. But it could be liable for indirect infringement, namely, inducing the end-product manufacturer to infringe.

Induced Infringement

Under a theory of induced infringement, a tech company that sells products overseas could be liable for U.S. patent infringement where, for example, an end-product manufacturer imports the company's product into the United States and directly infringes a U.S. patent. To be liable for the end-product manufacturer's infringement under an induced-infringement theory, the tech company must have known of the patent, known that its actions would result in infringement, and have intended to cause the infringement.2

When litigated in court, the dispute often centers on the intent requirement; namely, whether the tech company intended for the infringement to occur. Rarely will one find a smoking gun that shows a company's intent to infringe.

Patent owners asserting infringement, therefore, often look to circumstantial evidence of intent that might exist in items such as datasheets, user manuals, and product guides. Even if a tech company believes it did not intend to infringe, if the product documentation suggests otherwise, there may still be a finding of induced infringement. By considering recent examples in which tech companies faced this situation, CTOs and others responsible for product design and documentation can be mindful of ways to mitigate the risk of liability for induced infringement if third parties import the company's overseas products into the United States.

Technical Documents/Support as Proof of Intent to Induce Infringement

In a case involving LED driver products sold overseas, the court considered whether technical documentation for the products showed intent to induce infringement in the United States.3 The drivers provided functionality for, among other things, LED backlighting in devices such as phones. According to the patent owner, the supplier for the LED drivers, Kinetic Technologies, induced Samsung to infringe by providing Samsung with the LED drivers that were incorporated into phones manufactured overseas and then later sold in the United States.

In evaluating whether Kinetic Technologies intended Samsung to infringe, and was therefore liable for the infringement, the court looked to product datasheets and the technical support Kinetic offered Samsung. The court found that the datasheets did not show intent to induce infringement because, first, they did not show any encouragement or desire for Samsung to import its phones into the United States. Second, the court explained that the datasheets did not contain instructions on how to use the accused products in an infringing manner.

Regarding the technical support that Kinetic had provided to Samsung, the court found that the support was not specifically directed to inducing Samsung to infringe. In other words, neither the datasheets nor the technical support provided a sufficient link between the LED drivers and Samsung's alleged infringement to conclude that Kinetic intended for Samsung to infringe.

In a case involving cache management, the court similarly found that product manuals, datasheets, and product instructions did not show intent to induce infringement.4 There, the patent owner had accused Intel of inducing its customers to infringe by selling them processors that were designed with mechanisms for cache coherence. When a product can be used both in an infringing way and a non-infringing way, the court explained, the evidence showing that the accused party teaches the infringing use would show intent.

Although the technical documents described how Intel's processors worked, the court found those documents did not teach customers how to use the processors in an infringing manner. Further, the court explained, the documents did not recommend, encourage, or promote using the processors in an infringing manner. Simply describing the processor's functionality, the court concluded, is not enough to demonstrate intent to induce infringement.

Insight into OEM Supply Chain as Proof of Intent to Induce Infringement

Whether a company intends to induce infringement may also hinge on whether it knew products that it initially sold overseas were later imported into the United States. At issue in one recent case was a global supply chain involving lenses made by Genius Electronic Optical for use in digital cameras in smartphones and tablets.5

As part of the supply chain, Genius sold lenses to module integrators overseas who incorporated the lenses into cameras. The module integrators then sold the cameras to system integrators overseas, who subsequently incorporated the cameras into phones and tablets. Apple and Motorola then sold the final products, including some in the United States.

Genius did not dispute that its lenses infringed the patents at issue, but argued that it had no insight into Apple's and Motorola's supply chains, and had no idea whether its lenses were incorporated into products that were later sold in the United States. Because the phones and tablets had more than one supplier for the lenses, for all it knew, none of its lenses ever entered the United States. The court agreed.

As the court explained, because it was plausible that none of Genius' lenses entered the United States, Genius could not have knowledge of infringement by any Apple and Motorola products in the United States, and thus could not have induced infringement. Further, the court explained, Genius was not willfully blind to whether its lenses entered the U.S., which might have supported a finding of intent.

To show willful blindness, the court explained, Genius must have subjectively believed a high probability existed that its lenses entered the United States and must have taken deliberate actions to avoid learning the truth. But Genius was at best deliberately indifferent to whether its lenses entered the U.S., the court concluded, and such indifference does not rise to the level of intent needed to induce infringement.


These cases provide examples of how to mitigate the risk of liability for induced infringement if you manufacture and sell your products overseas, but third parties eventually import some of those products into the United States. As these examples reveal, merely describing the functionality of a product might not show intent to induce infringement. But if the companies had recommended or encouraged others to use the products in a certain way, or had promoted using the products in a certain way by touting the benefits and results of such use, a different result might have occurred.

If you do not need to recommend or promote using your products in a certain way, describing only the functionality of your product in the datasheets and product guides can help mitigate the risk of liability for induced infringement. In addition, as with the company in the last example, putting products into a supply chain overseas without knowledge of where those products are eventually sold might buffer you from liability for induced infringement.


1 35 U.S.C. § 271(a).

2 Commil USA, LLC v. Cisco Sys., Inc., 135 S.Ct. 1920, 1928 (2015); Microsoft Corp. v. DataTern, Inc., 755 F.3d 899, 904 (Fed. Cir. 2014).

3 Skyworks Sols., Inc. v. Kinetic Techs., Inc., No. 14-CV-00010-SI, 2015 WL 881670 (N.D. Cal. Mar. 2, 2015).

4 Memory Integrity, LLC v. Intel Corp., 144 F. Supp. 3d 1185 (D. Or. 2015).

5 Largan Precision Co, Ltd v. Genius Elec. Optical Co., 86 F. Supp. 3d 1105 (N.D. Cal. 2015). The U.S. Court of Appeals for the Federal Circuit affirmed the trial court's decision. Largan Precision Co. v. Genius Elec. Optical Co., 646 F. App'x 946 (Fed. Cir. 2016).

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
23 Sep 2018, Seminar, Chicago, United States

Finnegan is a sponsor of the Intellectual Property Owners Association Annual Meeting, supporting the Women in IP Networking Brunch.

26 Sep 2018, Webinar, Washington, DC, United States

This latest series of webinars will explore emerging trends in the changing intellectual property (IP) legal environment in Europe and the United States.

26 Sep 2018, Webinar, Washington, DC, United States

This latest series of webinars will explore emerging trends in the changing intellectual property (IP) legal environment in Europe and the United States.

Similar Articles
Relevancy Powered by MondaqAI
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Adduci Mastriani & Schaumberg LLP
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Adduci Mastriani & Schaumberg LLP
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions