Sec. 271(b) (Inducement) Infringement

  • BASICS: “Whoever actively induces infringement of a patent shall be liable as an infringer.” 35 U.S.C. § 271(b). “The term ‘induce’ means ‘[t]o lead on; to influence; to prevail on; to move by persuasion or influence.’ Webster’s New International Dictionary 1269 (2d ed. 1945). The addition of the adverb ‘actively’ suggests that the inducement must involve the taking of affirmative steps to bring about the desired result, see , at 27.” Global-Tech (U.S. 05/31/2011).
  • Must Know That Intended Induced Acts Infringe: Restricting the standard of DSU Med. (Fed. Cir. 12/13/06) (en banc), Global-Tech (U.S. 05/31/2011) requires for inducement a showing that the accused actually intended to cause the actions that are directly infringing and knew that those induced acts constitute patent infringement. Accord Commil USA (U.S. 05/26/2015) (rejecting U.S. Gov’t argument that Global-Tech did not clearly so rule.) Knowing that “the acts might infringe,” e.g., under a different claim construction than the defendant’s reasonable reading of the claims, is not enough: “It requires proof the defendant knew the acts were infringing. And [Global-Tech] was clear in rejecting any lesser mental state as the standard.” Id. Mere knowledge of the acts alleged to constitute infringement is not enough. The Cleveland Clinic (Fed. Cir. 06/16/17) (aff’g denial of motion to amend to assert inducement; testing service had no connection with doctors who may prescribe lipid lowering drugs based on results of test); Ferguson (Fed. Cir. 12/04/03); Microsoft (Fed. Cir. 04/04/14) (“To prove inducement of infringement, unlike direct infringement, the patentee must show that the accused inducer took an affirmative act to encourage infringement with the knowledge that the induced acts constitute patent infringement.”) See Nalco (Fed. Cir. 02/27/18) (rev’g trial court dismissal of inducement infringement complaint under Iqbal / Twombly; complaint sufficiently pled specific intent to induce infringement); see Kyocera (Fed. Cir. 10/14/08) (“[P]roviding customers with the system determination software, training them on implementation of their mobile devices, providing software and firmware updates, offering customer support, furnishing promotional and technical documents for the accused MSM chipsets, and recommending that its customers implement battery saving features” shows intent to cause the acts that produced infringement but is not enough to prove a specific intent to cause infringement under DSU.) See generally Staub (U.S. 03/01/2011) (“Intentional torts … generally require that the actor intend `the consequences‘ of an act,’ not simply `the act itself,’” but when corporation is accused, federal courts are divided on whether “the malicious mental state of one agent cannot generally be combined with the harmful action of another agent to hold the principal liable for a tort that requires both.”)
  • Must Be A Direct Infringement: There must be a direct infringement for there to be Sec. 271(b) liability. Limelight (U.S. 06/02/2014) (9-0) (rev’g Fed. Cir. ruling that a party can be liable for inducing infringement of a method claim under Sec. 271(b) even if no one has directly infringed if “(1) it knew of [the] patent, (2) it induced the performance of the steps of the method claimed in the patent [that it did not itself perform], and (3) those steps were performed.” Akamai Tech. II (Fed. Cir. 08/31/12) (en banc)); Lucent Tech. (Fed. Cir. 09/11/09).
  • Purposefully Causing Or Encouraging Infringement Is A Requirement In Addition To Knowing The Induced Actions Infringe: Sanofi (Fed. Cir. 11/09/17) (aff’g inducement based on proposed drug label despite existence of non-infringing uses; patent owner must show a “‘specific intent to encourage another’s infringement,’” describing this as “purposeful causation,” “intentional encouragement,” “encouragement and inferred intent” of infringement, and “specific intent to encourage the infringing use.”)
  • Reaches Foreign Actions Which Induce Direct Infringement In U.S.: BASF Agro (Fed. Cir. 05/31/12) (contempt of injunction against inducing infringement: “where a foreign party, with the requisite knowledge and intent, employs extraterritorial means to actively induce acts of direct infringement that occur within the United States, such conduct is not categorically exempt from redress under § 271(b).”).
  • Liability Attaches Before The Induced Direct Infringement Occurs: “Liability for inducement … attaches as of the time of the inducing activity, provided that direct infringement eventually occurs.” Suprema II (Fed. Cir. 08/10/15) (en banc, 6-4).
  • Corporate Officer May Be Liable For Inducing Infringement: “Officers of an allegedly infringing corporation can be held personally liable for actively inducing infringement under 35 U.S.C. § 271(b) only if they ‘knew or should have known [their] actions would induce actual infringements.’ Manville Sales (Fed. Cir. 10/23/90). Pre-issuance activities alone cannot establish inducement to infringe. See Nat’l Presto Indus. (Fed. Cir. 02/12/96). “Corporate officers who actively assist with their corporation’s infringement may be personally liable for inducing infringement regardless of whether the circumstances are such that a court should disregard the corporate entity and pierce the corporate veil.” Global Traffic (Fed. Cir. 06/04/15) (non-precedential) (aff’g judgment against corporate officer for inducing company customer’s infringement).

a) communication to direct infringer

  • Actual Inducement Of Direct Infringement (Successful Communication) Required: There must be “successful communication between the alleged inducer and the third-party direct infringer” to actually induce the third party to directly infringe. Power Integrations (Fed. Cir. 12/12/16) (vacating jury verdict of inducement due to erroneous jury instruction; distinguishing Ricoh as directed to issue of intent).
  • To Prove Intent, Do Not Need To Show Inducer Communicated Its Affirmative Acts To Direct Infringer: For purposes of proving intent, no need to show that inducer communicated its affirmative acts (e.g., programming firmware to have infringing use) to alleged direct infringer. Ricoh (Fed. Cir. 12/23/08).

b) knowledge of infringement

  • Global-Tech Narrows Reach of Inducement Liability:
    • Require Knowledge Of Infringement: “we now hold that induced infringement under § 271(b) requires knowledge that the induced acts constitute patent infringement.” Global-Tech Appliances, Inc. v. SEB SA (U.S. 05/31/2011) (aff’g inducement verdict where defendant copied patented product and did not tell that to its clearance counsel); Power Integrations (Fed. Cir. 12/12/16) (patent owner “was required to prove that: (1) a third party directly infringed the asserted claims …; (2) Fairchild induced those infringing acts; and (3) Fairchild knew the acts it induced constituted infringement.”); Commil I (Fed. Cir. 06/25/13) (granting new trial on inducement on account of erroneous “knew or should have known that its actions would induce actual infringement” jury instruction.), vacated on other grounds (U.S. 05/26/2015) (Knowing that “the acts might infringe,” e.g., under a different claim construction than the defendant’s reasonable reading of the claims, is not enough: “It requires proof the defendant knew the acts were infringing.”); Liqwd (Fed. Cir. 01/16/18) (non-precedential) (for preliminary injunction, need not prove pre-suit knowledge; need only show reasonably likely to prove that defendant now knows); Superior Indus. (Fed. Cir. 11/27/12) (aff’g dismissal of claims of indirect infringement); Lifetime (Fed. Cir. 09/07/17) (rev’g Iqbal / Twombly dismissal of complaint for indirect infringement where patent owner pled that defendant had knowledge of the patent, its scope, and the products covered thereby (by hiring patent owner employees), thereafter assisted in or directed the installation of exactly the same type of seal as the one described in the patent onto an RV, had never before made or sold these particular seals, and the seals have no noninfringing use.).
      • Reasoning: to maintain consistency with Aro II holding that contributory infringement requires knowledge of the patent and its infringement.
    • Willful Blindness May Establish Knowledge Of Infringement: Actual knowledge may be proven under “the doctrine of willful blindness”: “(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.” See Unwired Planet (Fed. Cir. 07/22/16) (vacating Summ. J. of no indirect infringement; that non-infringement defense is objectively strong is not sufficient basis on which to grant summary judgment on knowledge element of indirect infringement); Warsaw II (Fed. Cir. 06/03/16) (on remand ivo Commil: approving jury instruction: ‘“the alleged infringer knew or was willfully blind to the fact that the induced acts constituted patent infringement of at least one patent claim”’); Suprema III (Fed. Cir. 09/14/15) (substantial evidence supports willful blindness (for inducement liability): as part of market study infringer had studied related patent of same assignee that incorporated by reference application that issued (earlier) as the infringed patent, and was well-aware of patent owner’s product, and failed to obtain advice of counsel that would have found the asserted (pre-AIA) patent); Info-Hold (Fed. Cir. 04/24/15) (rev’g Summ. J. of no inducement; genuine dispute of material fact regarding willful blindness to infringement where patent owner explained patent coverage to defendant who said it would look again at patent but no evidence that it did.)
      • Rejects Fed. Cir. standard of “deliberate indifference to a known risk that a patent exists.” (SEB, S.A. (Fed. Cir. 02/05/10)); cf. Smith & Nephew (Fed. Cir. 01/16/13) (rev’g JMOL that had overturned $85 MM jury verdict of inducement where defendant designed product before learning of patent, wrote use instructions (paralleling claimed method) after learning of patent, did not compare claims to its product, and testified to belief that product worked in different manner) (non-precedential) (2-1).
      • “a willfully blind defendant is one who takes deliberate actions to avoid confirming a high probability of wrongdoing and who can almost be said to have actually known the critical facts. … By contrast, a reckless defendant is one who merely knows of a substantial and unjustified risk of such wrongdoing.”
      • No need to protect “parties who actively encourage others to violate patent rights and who take deliberate steps to remain ignorant of those rights despite a high probability that the rights exist and are being infringed.”
    • Not deciding whether willful blindness is sufficient to prove knowledge of the induced acts that constitute infringement.
  • Reasonable Belief That Use Is Not Infringing May Support Lack of Intent: Evidence sufficient to show that defendant’s personnel reasonably believed that its actions were non-infringing, supports finding that defendant lacked the required intent to induce infringement. Ecolab (Fed. Cir. 06/09/09).
  • Belief That Use Practices Prior Art May Evidence Lack Of Intent: Even though practicing the prior art is no defense to patent infringement, a “defendant’s belief that it can freely practice inventions found in the public domain” may support a finding of no specific intent to induce infringement. Kinetic Concepts (Fed. Cir. 02/02/09). Jury could base no-inducement finding on evidence that defendant thought its formulation was in the prior art and did not infringe the patent. Ecolab (Fed. Cir. 06/09/09).
  • Belief That Patent Is Invalid Does Not Negate Inducement Intent: “[B]elief in invalidity is no de­fense to a claim of induced infringement.” “[I]nvalidity is not a defense to infringement, it is a defense to liability. And because of that fact, a belief as to invalidity cannot negate the scienter required for induced infringement.” Commil USA (U.S. 05/26/2015) (6-2), vacating Commil I (Fed. Cir. 06/25/13) (2-1); cf. Univ. of Pitt. (Fed. Cir. 04/10/14) (rev’g Summ. J. of objective prong of willful infringement, based on invalidity defense that was not objectively unreasonable).
  • No Need To Show Prevalence Of Direct Infringement To Show Intent To Induce: No need to show prevalence of patients following physicians’ directives to perform one of the steps of the claimed methods where show physicians’’ intent to induce patients to take that step. Eli Lilly (Fed. Cir. 01/12/17) (aff’g inducement of multi-actor infringement).
  • TIPS:

c) relevance of litigation defenses

  • (Post Commil) Objective Unreasonableness Of Non-Infringement Defense—Under Court’s Actual Claim Constructions—Is Substantial Evidence Of Knowledge Or Willful Blindness To Infringement: “To show the intent to induce infringement, it is sufficient that the plaintiff establish that a defendant’s asserted belief in non-infringement was unreasonable.” Warsaw II (Fed. Cir. 06/03/16) (on remand ivo Commil: jury could reasonably conclude that defendant knew or was willfully blind to fact of infringement based on “substantial evidence that [its] infringement position was objectively unreasonable,” and jury will not be permitted to hear evidence of or reasonableness of the claim-construction position on which the non-infringement defense supposedly was based. Here, defendant had proposed “plain meaning.”) But see Commil USA (U.S. 05/26/2015) (“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.”); Koninklijke Philips (Fed. Cir. 07/28/16) (non-precedential) (jury verdict of no contributory infringement supported for two patents by defendant’s “belief in non-infringement, based on its reasonable claim construction argument,” even though court rejected that construction).
  • TIPS:
  • JMOL Of Non-Infringement (Later Reversed) Does Not Necessarily Negate Inducement Intent To Infringe: During period where trial court JMOL of non-infringement had not yet been reversed by Fed. Cir., whether defendant had requisite knowledge that induced acts constitute infringement was a question of fact for the jury. Smith & Nephew (Fed. Cir. 03/18/15) (non-precedential) (“the district court’s ruling [JMOL of non-infringement] and pronouncement could, at most, create a factual question, not an entitlement to a no-knowledge finding as a matter of law.”)

d) relevance of clearance opinion

  • (Partly Pre Global-Tech) Stick And Carrot Reasons To Get A “No Direct Infringement” Clearance Opinion: Under Commil USA (U.S. 05/26/2015) (6-2), a clearance opinion that the induced acts would not directly infringe the claims, should be relevant. A clearance opinion can help defend against an inducement charge. Broadcom (Fed. Cir. 09/24/08) (“Because opinion-of-counsel evidence, along with other factors, may reflect whether the accused infringer ‘knew or should have known’ that its actions would cause another to directly infringe, we hold that such evidence remains relevant to the second prong of the intent analysis.”); Bettcher (Fed. Cir. 10/03/11) (patent attorney testimony at trial about his clearance opinion supported jury verdict of no inducement intent). But also need “proof of good-faith reliance” on the opinion, not just its possession. Bose (Fed. Cir. 03/14/14) (non-precedential). Conversely, jury may be instructed that absence of a clearance opinion is a factor favoring finding of specific intent to induce infringement. Id. See Suprema III (Fed. Cir. 09/14/15) (“We do not hold that an opinion of counsel is required to avoid a finding of induced infringement. The failure to obtain an opinion of counsel is merely one fact of many that may be considered in the assessment of willful blindness.”)
  • Clearance Opinion May Protect Officer From Personal Liability: Micro Chemical brought this suit two days after the patent issued, at which time Mr. Hummel took reasonable steps to avoid infringement. Among other things, Mr. Hummel sought and relied on the advice of counsel in redesigning the accused machines. The undisputed facts do not establish the knowledge necessary to find inducement to infringe. The district court appropriately granted summary judgment finding Mr. Hummel not personally liable for inducing Lextron’s infringement.” Micro Chemical (Fed. Cir. 10/06/99).
    • AIA: Failure to obtain or present to court/jury advice of counsel re the asserted patent “may not be used to prove that the accused infringer willfully infringed the patent or that the infringer intended to induce infringement of the patent.” (Sec. 17) 35 U.S.C. § 298 (AIA). {Per 2013 AIA Technical Corrections, applies to any civil action commenced on or after Jan. 14, 2013. Possibly also applies to any patent issued after 09/17/12, per AIA Sec. 35?}

e) relevance of non-infringing uses

  • (Pre Global-Tech) Designing Or Manufacturing Infringing-Use-Only Separable Software Instructions May Be Sufficient To Show Specific Intent: “QSI’s role as the designer and manufacturer of the optical drives in question may evidence an intent sufficiently specific to support a finding of inducement. As indicated above, Water Technologies inferred a specific intent to cause infringement from a defendant’s knowledge of the patent and control over the design or manufacturing of the product used for direct infringement. 850 F.2d at 668–69. Moreover, Grokster recognized that providing instruction on how to engage in an infringing use ‘show[s] an affirmative intent that the product be used to infringe.’ 545 U.S. at 936. In this case, QSI has incorporated into its optical drives software that instructs the hardware to perform a series of steps. Ricoh asserts that the only function of certain software components is to instruct the drives to perform its patented methods. … Ricoh thus argues that QSI’s specific intent that the ’552 and ’755 patents be infringed is shown by this affirmative act of incorporating components whose sole purpose is to cause the drives to operate in a manner that infringes the ’552 and ’755 patents under normal circumstances. To the extent that the drives do contain components which are in fact separable from those used to implement noninfringing functions, and to the extent that the components do not in fact have a purpose other than the performance of infringing functions under normal use conditions, such evidence would create a material issue of fact regarding QSI’s intent that its drives be used to infringe the ’552 and ’755 patents, which could not be decided on summary judgment.” Ricoh (Fed. Cir. 12/23/08). And, software instructions may constitute the separable component. Id.
    • But No Intent Shown If Defendant Could Have Believed Instructions’ Technique Was Not Infringing: “The original product instructions do not evidence a specific intent to encourage infringement, since they teach a stirring action which Basic could have reasonably believed was non-infringing.” Vita-Mix (Fed. Cir. 09/16/09) (good case to limit expansion of Ricoh).
  • Instructions Teaching A Non-Infringing Use Cannot Show Intent Even If Instructions May Lead To Infringing Use: “The amended product instructions teach an undisputedly non-infringing use, evidencing intent to discourage infringement. Thus, Basic’s product instructions provide no basis on which Vita-Mix can rely to infer specific intent to encourage infringement.” Vita-Mix (Fed. Cir. 09/16/09); see Takeda Pharm. (Fed. Cir. 05/06/15) (2-1) (no probability of success in proving inducement because the drug label does not “encourage, recommend, or promote infringement;” and does not inevitably lead to infringement; defendant “must have ‘knowingly aided and abetted’ direct infringement.”) See Sanofi (Fed. Cir. 11/09/17) (distinguishing Vita-Mix.)
  • May Induce Even If Has Substantial Non-Infringing Use: “the existence of a substantial non-infringing use does not preclude a finding of inducement.” Toshiba (Fed. Cir. 06/11/12) (rev’g Summ. J. of no inducement infringement). “A label that instructed users to follow the instructions in an infringing manner was sufficient even though some users would not follow the instructions [and] … even though the product … had substantial noninfringing uses. Conversely, ‘vague’ instructions that require one to ‘look outside the label to understand the alleged implicit encouragement’ do not, without more, induce infringement.” Eli Lilly (Fed. Cir. 01/12/17) (aff’g inducement of multi-actor infringement). See Sanofi (Fed. Cir. 11/09/17) (aff’g inducement based on proposed drug label despite existence of non-infringing uses; “a person can be liable for inducing an infringing use of a product even if the product has substantial noninfringing uses.”)
  • Knowledge Of Infringing Uses Not Dispositive: Dynacore (Fed. Cir. 03/31/04) (“The mere sale of a product capable of substantial non-infringing uses does not constitute indirect infringement of a patent.”); accord Takeda Pharm. (Fed. Cir. 05/06/15) (mere knowledge of infringing uses and that doctors may recommend the drug for an infringing use, coupled with a vague label that does not “inevitably” lead to infringing use, is insufficient; defendant “must have ‘knowingly aided and abetted’ direct infringement.”) That is so even if the seller knows that its multi-use product is sometimes used in an infringing manner; such knowledge being “legally irrelevant.” Warner-Lambert (Fed. Cir. 01/16/03). But see Ricoh (Fed. Cir. 12/23/08) (if has separable, infringing-use only component, and designer/manufacturer is defendant, that defeats Summ. J. on intent issue for defendant.).

f) relevance of instructions to users

  • Lack Of Specific Instructions On How To Use Accused Feature May Negate Specific Intent: “Assume also that the company selling the software doesn’t provide specific instructions on how to use the five features, thus taking potential liability outside the realm of § 271(b).” Lucent Tech. (Fed. Cir. 09/11/09) (dicta). But, same decision aff’g jury verdict of inducement finding that expert opinion that infringer intended infringement, was enough.
  • Proposed Drug Label That Will Cause Some Users To Infringe Helps Evidence Specific Intent: Sufficient evidence of specific intent found against party submitting ANDA application, with label language required by an unappealed FDA ruling, “because [the party] included instructions in its proposed label that will cause at least some users to infringe the asserted method claims [and] despite being aware of the infringement problem presented by the proposed label, [it] nonetheless proceeded with its plans to distribute its generic drug product.” AstraZeneca (Fed. Cir. 11/01/10) (Sec. 271(e)(2)(A) infringement action); accord Eli Lilly (Fed. Cir. 07/29/11) (non-precedential) (“the sale of a product specifically labeled for use in a patented method constitutes inducement to infringe that patent”); Vanda Pharm. (Fed. Cir. 04/13/18) (2-1) (aff’g inducement judgment where “proposed label ‘recommends’ that physicians perform the claimed steps,” whether or not the proposed ANDA product has substantial noninfringing uses).

g) relevance of efforts to avoid infringement

  • (Pre Global-Tech) Failure To Remove “Infringing Feature” Is Relevant To Intent: “Grokster recognized that a failure to remove or diminish infringing features of a distributed product is relevant to a party’s intent that those features be used for direct infringement.” Ricoh (Fed. Cir. 12/23/08).
  • (Pre Global-Tech) Failure Post-Suit To Redesign Or Give Customers Instructions On How To Avoid Infringement, Is Factor Showing Specific Intent: “concedes that it ‘worked closely with its customers to develop and support the accused products, and that Qualcomm did not make changes to those products or give its customers [instructions regarding how to avoid infringement] after this lawsuit was filed.’” Broadcom (Fed. Cir. 09/24/08).
  • TIPS: