Indirect Infringement

The law provides protection against certain parties who do not direct infringe directly yet nevertheless harm the patent owner. Two forms of indirect infringement include contributory infringement and induced infringement. Prior to 1952, induced infringement was considered evidence of contributory infringement. That changed when Congress enacted 35 U.S. Code § 271. See Global-Tech Appliances, Inc. v. SEB SA, 131 S. Ct. 2060, 2067 (S. Ct. 2011).

Induced Infringement

When a party knowingly induces another party to infringe, they are liable as an infringer.

Whoever actively induces infringement of a patent shall be liable as an infringer.

— 35 U.S.C. § 271 (b).

Inducement can only occur if direct infringement occurs.

This case presents the question whether a defendant may be liable for inducing infringement of a patent under 35 U.S.C. § 271(b) when no one has directly infringed the patent under § 271(a) or any other statutory provision. The statutory text and structure and our prior case law require that we answer this question in the negative.

— Limelight Networks v. Akamai Technologies, 134 S. Ct. 2111, 2115 (S. Ct. 2014).

A party is only liable for induced infringement if they had knowledge of the patent and also had knowledge that the induced acts were infringing.

[W]e now hold that induced infringement under § 271(b) requires [knowledge of the patent and also] knowledge that the induced acts constitute patent infringement.n

— Global-Tech Appliances, Inc. v. SEB SA, 131 S. Ct. 2060, 2068 (S. Ct. 2011).

Induced infringement requires specific intent.

To prove induced infringement, the patentee must show direct infringement, and that the alleged infringer knowingly induced infringement and possessed specific intent to encourage another's infringement.

— Toshiba Corp. v. Imation Corp., 681 F. 3d 1358, 1363 (Fed. Cir. 2012).

A party may not be liable under induced infringement if they read the relevant claims in a way that obviates direct infringement.

Government and Commil seek to … [establish] that a person, or entity, could be liable [for inducement] even though he did not know the acts were infringing. In other words, even if the defendant reads the patent's claims differently from the plaintiff, and that reading is reasonable, he would still be liable because he knew the acts might infringe. Global-Tech requires more. It requires proof the defendant knew the acts were infringing.

— Commil USA, LLC v. Cisco Systems, Inc., 135 S. Ct. 1920, 1928 (S.Ct. 2015).

Willful blindness is not a defense against induced infringement.

Given the long history of willful blindness and its wide acceptance in the Federal Judiciary, we can see no reason why the doctrine should not apply in civil lawsuits for induced patent infringement under 35 U.S.C. § 271(b).

— Global-Tech Appliances, Inc. v. SEB SA, 131 S. Ct. 2060, 2069 (S. Ct. 2011).

Willful blindness exists when a party believes there is a high probability that a fact exists and took deliberate actions to avoid learning the fact.

While the Courts of Appeals articulate the doctrine of willful blindness in slightly different ways, all appear to agree on two basic requirements: (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.

— Global-Tech Appliances, Inc. v. SEB SA, 131 S. Ct. 2060, 2070 (S. Ct. 2011).

An infringer cannot avoid liability under inducement based on a belief that a patent is invalid.

The question the Court confronts today concerns whether a defendant's belief regarding patent validity is a defense to a claim of induced infringement. It is not.

— Commil USA, LLC v. Cisco Systems, Inc., 135 S. Ct. 1920, 1928 (S. Ct. 2015).

Contributory Infringement

Contributory infringement refers to the act of using, selling, or importing a component specifically designed for use in a patented article. Contributory infringement does not apply to commodities of commerce that are suitable for substantial noninfringing use.

Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, 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, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.

— 35 U.S.C. § 271 (c).

The conditions for establishing contributory infringement include knowledge of infringement, materiality to the invention, lack of a noninfringing use, and the existence of direct infringement.

To establish contributory infringement, the patent owner must show the following elements relevant to this appeal: 1) that there is direct infringement, 2) that the accused infringer had knowledge of the patent, 3) that the component has no substantial noninfringing uses, and 4) that the component is a material part of the invention.

— Fujitsu Ltd. v. Netgear Inc., 620 F. 3d 1321, 1326 (Fed. Cir. 2010).

In particular, a violator must know their component is designed for use in a combination that is both patented and infringing.

In Aro II, a majority held that a violator of § 271(c) must know that the combination for which his component was especially designed was both patented and infringing, 377 U.S., at 488, 84 S.Ct. 1526, and as we explain below, that conclusion compels this same knowledge for liability under § 271(b).

— Global-Tech Appliances, Inc. v. SEB SA, 131 S. Ct. 2060, 2067 (S. Ct. 2011).

An alleged infringer may not be liable for contributory infringement if they read the claims in a way that obviates direct infringement.

Government and Commil seek to … [establish] that a person, or entity, could be liable [for contributory infringement] even though he did not know the acts were infringing. In other words, even if the defendant reads the patent's claims differently from the plaintiff, and that reading is reasonable, he would still be liable because he knew the acts might infringe. Global-Tech requires more. It requires proof the defendant knew the acts were infringing.

— Commil USA, LLC v. Cisco Systems, Inc., 135 S. Ct. 1920, 1928 (S.Ct. 2015).

The court may focus their liability analysis on individual components to prevent an infringer from bundling components to avoid liability.

[A]n infringer should not be permitted to escape liability as a contributory infringer merely by embedding [the infringing apparatus] in a larger product with some additional, separable feature before importing and selling it.

— Lucent Technologies, Inc. v. Gateway, Inc., 580 F. 3d 1301, 1320 (Fed. Cir. 2009).