THE STATUS OF INDUCEMENT
Presented by:
Joseph A. Calvaruso
Orrick, Herrington & Sutcliffe LLP
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Applicable Statute
35 U.S.C. § 271 - Infringement of Patent
(a) [W]hoever without authority makes, uses, offers
to sell or sells any patented invention, within the
United States or imports into the United States
any patented invention during the term of the
patent therefor, infringes the patent.
(b) Whoever actively induces infringement of a
patent shall be liable as an infringer.
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Proving Inducement
•
Alleged infringer’s action induced direct infringement
•
Alleged infringer had knowledge that the induced acts
constitute patent infringement
•
Knowledge means:
— actual knowledge
— willful blindness
Global-Tech Appliances, Inc. v. SEB S.A., 131 S.Ct. 2060
(2011); Deepsouth Packing Co. v. Laitram Corp., 406 U.S.
518 (1972)
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Proving Intent
• To prove the required intent the fact finder must
examine the totality of the circumstances
including whether the accused infringer:
1. Investigated the infringement asserted.
2. Explored design around approaches.
3. Took any remedial steps.
4. Obtained legal advice.
Broadcom v. Qualcomm, 543 F.3d 683 (Fed. Cir.
2008)
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Advice of Counsel Under AIA
• 35 U.S.C. § 298 - Advice of Counsel
— “The failure of an infringer to obtain the
advice of counsel with respect to any
allegedly infringed patent, or the failure
of the infringer to present such advice to
the court or jury, 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.”
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Advice Of Counsel And Intent To Induce
• Jury will not be instructed to consider that defendant
failed to seek an opinion of counsel or that defendants
sought an opinion of counsel but did not disclose it.
• If defendant obtained opinion of counsel, waives
attorney client privilege and produces the opinion, the
jury can consider that defendant obtained an opinion
in evaluating defendant’s intent.
• If the defendant obtained an opinion of counsel. But
does not waive attorney client privilege and present
the opinion, then the jury will not be instructed to
consider that the defendant obtained counsel’s
opinion.
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Noninfringement Opinion Can Negate Intent
• A good faith belief of noninfringement tends
to show that an accused inducer lacked the
necessary intent.
DSU Med. Corp. v. JMS Co., Ltd., 471 F.3d 1293
(Fed. Cir. 2006) (en banc); Ecolab, Inc. v. FMC
Corp., 569 F.3d 1335 (Fed. Cir. 2009); Bettcher
Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629
(Fed. Cir. 2011)
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Commil USA, LLC v. Cisco Sys., Inc., 720 F.3d 1361 (Fed. Cir. 2013)
• It is axiomatic that one cannot infringe an invalid
patent.
• There is no principled distinction between a good
faith belief of invalidity and a good faith belief of
no infringement.
• A good faith belief of invalidity is evidence that
may negate the specific intent to encourage
another’s infringement, which is required for
induced infringement.
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Suprema, Inc. v. ITC, 2013 WL 6510929 (Fed. Cir. 2013)
• Patent directed to method for capturing and
processing a fingerprint image.
• Respondents imported into the U.S. scanners
that the patentee alleged directly infringed
the patented method when combined with
software in the U.S.
• Patentee conceded the scanners have
substantial noninfringing uses and that the
scanners only infringed after importation when
the software was added.
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Suprema, Inc. v. ITC, 2013 WL 6510929 (Fed. Cir. 2013) (cont’d)
ITC found a violation:
• the scanners directly infringed in the
U.S. when they were combined with
certain software.
• the non-U.S. respondent induced by
encouraging the infringing combination
in the U.S.
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Suprema, Inc. v. ITC, 2013 WL 6510929 (Fed. Cir. 2013) (cont’d)
Federal Circuit reversed:
• Section 337 sets forth the following conduct as
being unlawful:
* * *
(B) The importation into the United States, the
sale for importation, or the sale within the
United States after importation. . . of articles
that –
(i) infringe a valid and enforceable United
States patent. . . .
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Suprema, Inc. v. ITC, 2013 WL 6510929 (Fed. Cir. 2013) (cont’d)
Federal Circuit reversed:
•
To prevail on inducement, the patentee must show, first
that there has been a direct infringement.
•
There is no completed inducement until there has been
a direct inducement.
•
The only pertinent articles are those which directly
infringe at the time of importation.
•
§337 cannot extend to alleged inducement where the
acts of underlying direct infringement occur postimportation.
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Limelight Networks, Inc. v. Akamai Techs., Inc., No. 12-786 (Sup. Ct.)
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Federal Circuit En Banc Decision (692 F.3d 1301)
̶
It is well settled that there can be no indirect infringement
without direct infringement.
̶
All the steps of a claimed method must be performed to find
induced infringement but it is not necessary to prove that
all steps were performed by single entity.
̶
A party that performs some steps of a patented process and
actively induces another to commit the remaining steps may
be liable for inducement of infringement under Section
271(b), even though no party in that scenario would be
liable for direct infringement under Section 271(a).
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Limelight Networks, Inc. v. Akamai Techs., Inc., No. 12-786 (Sup. Ct.) (cont’d)
• Question Presented:
̶
Whether the Federal Circuit erred in
holding that a defendant may be held
liable for inducing patent infringement
under 35 U.S.C. § 271(b) even though
no one has committed direct
infringement under § 271(a).
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THE STATUS OF INDUCEMENT
Thank You
Joseph A. Calvaruso
Orrick, Herrington & Sutcliffe LLP
51 West 52nd Street
New York, NY 10019
jcalvaruso@orrick.com
1-212-506-5140
www.orrick.com
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