How do you induce patent infringement?

How do you induce patent infringement?

A patent is a set of exclusive rights granted to the inventor of an invention. When an inventor is granted a patent on an invention the inventor has the right to exclude others from making, selling, using or importing the invention into the United States for a period of time.  When someone violates the rights granted by the patent that is known as patent infringement.  An inventor is allowed to sue third parties to stop patent infringement.

What about when a third party does not actually infringe on a patent, but merely provides information that allows other people to infringe on the patent.   That is known as inducement of patent infringement. A patent holder may hold a third party liable for inducement of patent infringement 35 U.S.C. 271(b).  35 U.S.C. 271(b) states: Whoever actively induces infringement of a patent shall be liable as an infringer.

What behavior must an inventor to hold a third party is liable for inducement of patent infringement under 35 U.S.C. 271(b)?  The statute does not exactly state what constitutes inducement of patent infringement and in that situation a review of court cases is necessary to determine how courts have interpreted the statute.

The foundation for inducement of patent infringment is a Federal Circuit case – Manville Sales Corp. v. Paramount Systems, Inc., 917 F.2d 544 (Fed. Cir. 1990).  In Manville v. Paramount, the Federal Circuit held that, to prove induced infringement, the patent holder must show that the infringer’s actions induced the infringement of the patent and that the infringer knew, or should have known, his actions would induce actual infringements.

The Federal Circuit revised the test for induced patent infringement in DSU Medical Corp. v. JMS Co., Ltd., 471 F.3d 1293 (Fed. Cir. 2006).  In DSU the Federal Circuit held that to be liable for induced infringement, the alleged inducer must know, or should have known, that its actions would induce infringement. The Federal Circuit further held that the accused infringer must know about the patent at issue to know its actions would induce actual infringement.

The Supreme Court of the United States revised what a patent holder must show to hold a third part liable for induced patent infringement in Global-Tech Appliances, inc. v. SEB S.A. (2011) .  In Global-Tech the accused infringer argued that they could not be held liable for induced patent infringement because they did not have actual knowledge of the patent.  The evidence presented at the time showed that the accused infinger copied a competitor’s product, performed a patent search, but failed to tell the attorney preforming the patent search that the product was a copy of a competitor’s product.  The Supreme court held that the actual knowledge was not required and that willful blindness would satisfy the knowledge requirement of the induced patent infringement test.  The Supreme Court stated in its opinion that willful blindness requires taking deliberate actions to avoid confirming a high probability of wrongdoing.

Restated simply to demonstrate induced patent infringement a patent holder must show:

  1. Actual infringement – there must be a person directly infringing on that patent.
  2. Inducement – the person accused of induced patent infringement must encourage the actual infringement.
  3. Knowledge – the person accused of induced patent infringement must have knowledge that the encouragement will result in actual infringement.

If you have more questions about induced patent infringement is it best to consult with an experienced patent attorney.

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