Sec. 271(a) (Direct) Infringement To Support Indirect Infringement

  • BASICS: Unlike Sec. 271(f), for someone to be liable for indirect infringement under Secs. 271(b) or 271(c), someone needs to be liable for direct infringement under Sec. 271(a). Limelight (U.S. 06/02/2014) (rev’g contrary Fed. Cir. ruling). Both contributory and inducement infringement require an underlying act of direct infringement. In re Bill of Lading (Fed. Cir. 06/07/12).
  • Need Specific Instance Of Direct Infringement Unless Necessarily Infringes: To prove direct infringement by users of an accused device, patentee must “either point to specific instances of direct infringement or show that the accused device necessarily infringes the patent in suit.” Acco Brands (Fed. Cir. 09/12/07); accord Fujitsu (Fed. Cir. 09/20/10) (aff’g Summ. J. of no contributory or inducement infringement because no showing of direct infringement by customers; distinguishing Ricoh and Vita-Mix). Mirror Worlds (Fed. Cir. 09/04/12) (aff’g JMOL overturning large damages’ award; manuals showing steps of method in isolation do not establish direct infringement basis for inducement); Tex. Advanced (Fed. Cir. 05/01/18) (reversing method claim infringement verdict because no showing that only use mode that was accused, was ever used in commercial product, but not as to apparatus claims requiring capability not use). But, need only a single instance of direct infringement. Lucent Tech. (Fed. Cir. 09/11/09).
  • Need Showing Accused Code Portion Was Executed: JMOL of no indirect infringement affirmed for lack of sufficient evidence that the accused code portion (which would practice the claimed method) ever actually ran. Lucent Tech. (Fed. Cir. 09/25/08).
  • Capable Of Being Configured In Infringing Manner Insufficient Where Claim Requires Particular Configuration: Where claim requires a particular configuration, not merely capability, then infringement requires product to be so configured. Ball Aerosol (Fed. Cir. 02/09/09) (“BASC’s reliance on cases that found infringement by accused products that were reasonably capable of operating in an infringing manner is misplaced, since that line of cases is relevant only to claim language that specifies that the claim is drawn to capability.”); ViaTech (Fed. Cir. 05/23/18) (non-precedential) (pre-installation Windows with code for creating the alleged database upon installation does not satisfy claim that “requires the presence of a database, not simple ‘capability.’”) But where requires capability, then infringed by “a ‘reasonably capable’ accused device … particularly where, as here, there is evidence that the accused device is actually used in an infringing manner and can be so used without significant alterations.” Ericsson (Fed. Cir. 12/04/14).
  • Circumstantial Evidence Of Users’ Direct Infringement Can Be Sufficient: Direct infringement by users may be shown by circumstantial evidence. Power Integrations (Fed. Cir. 12/12/16) (sufficient: “circumstantial evidence of inducement (e.g., advertisements, user manuals) directed to a class of direct infringers (e.g., customers, end users) without requiring hard proof that any individual third-party direct infringer was actually persuaded to infringe by that material.”); O2 Micro (Fed. Cir. 11/18/11) (non-precedential); cf. Largan Precision (Fed. Cir. 04/27/16) (non-precedential) (aff’g Summ. J. of no inducement because no evidence accused lens incorporated into any Apple product sold in U.S.). Accused indirect infringer’s product manual describing use of a product in an infringing manner is sufficient circumstantial evidence of direct infringement of a method claim where the product cannot be used any other way. Symantec (Fed. Cir. 04/11/08); Toshiba (Fed. Cir. 06/11/12) (rev’g Summ. J. of no inducement infringement; “where an alleged infringer designs a product for use in an infringing way and instructs users to use the product in an infringing way, there is sufficient evidence for a jury to find direct infringement,” even if there is a non-infringing mode of use too); Convolve I (Fed. Cir. 07/01/13) (non-precedential) (rev’g Summ. J.; circumstantial evidence of direct infringement sufficient). Infringement verdict supported (“just barely”) by evidence of extensive sales + expert opined that others likely used + instructions on how to use in accused way. Lucent Tech. (Fed. Cir. 09/11/09) (citing Moleculon, and distinguishing Acco Brands and E-Pass).
    • Note: this issue addresses whether accused device has non-infringing uses, unlike current law on contributory infringement, which asks (oddly) whether accused feature of accused device has substantial non-infringing uses.
  • TIPS: