Patent Inducement to Infringe: Legal Updates on Supreme Court Decision

Hot news in Intellectual Property Law: several law firms have reported on the May 31, 2011 decision of the Supreme Court regarding when a company is liable for inducing another to infringe on a third party’s patent. Here are some of the salient comments:

Supreme Court Ruling Redefines the Standard for Proving Inducement of Patent Infringement (Armstrong Teasdale LLP)

“Generally speaking, induced infringement occurs when a party instructs (or ‘induces’) another to perform some process, or manufacture some product, that infringes a third-party’s patent rights. An example would be a company that sells a kit containing all the parts to an infringing product, along with instructions that tell the buyer how to assemble the product such that it falls within the scope of the patent. That company may be liable for inducing patent infringement when a customer purchases the kit and uses the infringing product as instructed by the company. According to 35 U.S.C. § 271(b), a party that induces another to infringe can be held liable for the infringement: ‘whoever actively induces infringement of a patent shall be liable as an infringer.. .This decision results in the Court’s abandonment of the Federal Circuit’s previously used ‘deliberate indifference’ test.” Read more »

Supreme Court Clarifies Standard for Induced Patent Infringement in Global-Tech (Venable LLP)

“In the first of three patent decisions to be handed down this term, the Court parted ways with the analysis, but not the outcome, of the Federal Circuit, which had previously held that the intent element for induced infringement required only that a plaintiff show that the alleged infringer ‘knew or should have known that his actions would induce actual infringements.’ The Court nevertheless affirmed the Federal Circuit’s judgment based on evidence showing that the petitioner-defendant, Pentalpha, had ‘willfully blinded itself to the infringing nature’ of the induced conduct.” Read more » 

Induced Patent Infringement Requires Proof of Knowledge that the Induced Acts Infringe (Sutherland Asbill & Brennan LLP) 

 “ ‘Willful blindness’ has two 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.’ Id. at 13. Proof of ’deliberate indifference’ is insufficient because ‘it permits a finding of knowledge when there is merely a ‘known risk’ that the induced acts are infringement,’ and it ‘does not require active efforts by an inducer to avoid knowing about the infringing nature of the activities.’ Id. at 14.” Read more »

Supreme Court Sets the Bar High: Requires Knowledge or Willful Blindness to Establish Inducing Infringement of a Patent (Morrison & Foerster LLP)

“[T]he district court found that a successful plaintiff on an inducement claim must demonstrate both ‘that the alleged infringer knowingly induced infringement of a patent and possessed specific intent to encourage another’s infringement,’ and that the inducer had ‘actual or constructive knowledge of the patent.’ However, despite Global-Tech’s lack of actual knowledge of the `312 patent prior to SEB’s suit, the court affirmed the jury’s finding of inducement of infringement (and infringement), stating that the ‘evidence was sufficient to establish specific intent and action to induce infringement.’ …The Court, however, made clear that it did not require actual knowledge on the part of the inducer. It is enough to show that the defendant was willfully blind to the possibility that the induced acts constituted patent infringement.” Read more »

Supreme Court Rules That Knowledge Of Patent Is Required For Liability For Inducing Patent Infringement, But Willful Blindness Is Enough  (Sheppard Mullin Richter & Hampton LLP)

“…the language of the [Patent law] 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.” Read more »

Actual Knowledge an Element of §271(B) Inducement, but Willful Blindness Will Suffice (McDermott Will & Emery)

“The Supreme Court of the United States recently ruled that induced infringement under 35 U.S.C. §271(b) requires knowledge that the induced acts constitute patent infringement, but that liability cannot be averted through willful blindness that a copied product is patented.” Read more »

Global-Tech v. SEB: Supreme Court on induced patent infringement (Bryan Beel)

The Supreme Court decided Global-Tech v. SEB to review the law of induced patent infringement. This is the Court’s full opinion. Read more »

Recent Supreme Court Decisions Clarify Patent Infringement and Ownership (Bryan Cave)

Under 35 U.S.C. § 271(b), “[w]hoever actively induces infringement of a patent shall be liable as an infringer.” The issue in Global-Tech Appliances, Inc. v. SEB S.A. was whether the party who “actively induces infringement of a patent” must know that the induced acts constitute patent infringement. Read more »