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					Indirect Infringement II

        Prof Merges

   Patent Law – 11.1.2012
           Infringement


• Direct

• Indirect
        35 U.S.C. § 271(a)
(a) Except as otherwise provided in this
  title, whoever 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.
Indirect infringement: Inducement
  and contributory infringement


35 USC 271 (b):
Whoever actively induces
 infringement of a patent shall
 be liable as an infringer.
271(c): Whoever offers to sell or sells within the
  United States or imports into the United States a
  component of a patented machine, manufacture,
  combination or composition, or a material or
  apparatus for use in practicing a patented process,
  constituting a material part of the invention,
  knowing the same to be especially made or
  especially adapted for use in an infringement of
  such patent, and not a staple article or commodity
  of commerce suitable for substantial noninfringing
  use, shall be liable as a contributory infringer.
Infringement checklist

           • Single entity?
           • Perform
             infringing
             act?
           • In US?
Dealing with “missing pieces”
Infringement checklist

           • Single entity?
           • Perform
             infringing
             act?
           • In US?
                 35 USC 271(c)
(c) Whoever offers to sell or sells within the United
  States or imports into the United States a
  component of a patented machine, manufacture,
  combination, or composition, or a material or
  apparatus for use in practicing a patented process,
  constituting a material part of the invention,
  knowing the same to be especially made or
  especially adapted for use in an infringement of
  such patent, and not a staple article or commodity
  of commerce suitable for substantial noninfringing
  use, shall be liable as a contributory infringer.
   What is required for indirect
         infringement?

• Someone has to directly infringe

• The indirect infringer must
  instruct or enable the infringer’s
  actions
Infringement checklist

           • Single entity?
           • Perform
             infringing
             act?
           • In US?
     Contributory Infringement

• Start with the Aro case in the Supreme Court
Aro Mfg.
      Aro I – Direct and Indirect
             Infringement

• Claims included (1) convertible top and (2)
  car itself

• Convertible Top Replacement Co. sued Aro
  Co., a “replacement top company”

  Car owners are DIRECT infringers
   Aro was (at most) a contributory infringer
               Aro I - issues

• “Reconstruction and repair” doctrine

For owners of LICENSED cars only (GM cars)
 “Repair” is ok, reconstruction is not

Includes an implied license notion:
 purchasers implicitly have right to maintain
 what they buy
     Aro I: What About Ford Car
              Owners?

• Their repair of convertible tops IS an
  infringing act

• No “implied license” to repair convertible
  tops; never paid patentee for use of patented
  invention
                     Aro II
• Ford customer sales: unlicensed

• Even “repair” is infringing here

  – Not a question of exhaustion


• Customers infringe: repair “perpetuates the
  infringing use” - p. 971
             This case, Aro II

• Aro is back in court for alleged infringement
  of CTR’s patent – by virtue of repair of tops
  on Ford Cars

• BUT: Aro cannot be a direct infringer; so the
  suit is for CONTRIBUTORY INFRINGEMENT
               Aro II: 271(c)

• 271(c) “knowledge”

• Knowledge: of both patent and infringement

• See p. 912 n 8
    Exhaustion: Implicit in Aro II

• At issue in LG v Quanta case from Supreme
  Court last term

• Who is liable in the “chain of possession” of a
  patented item? When does liability cut off?
Infringement checklist

           • Single entity?
           • Perform
             infringing
             act?
           • In US?
CR Bard

          Aorta




                  Coronary
                  Artery
           Process claim


• Use of apparatus in unclogging
  arteries
271(c): Whoever offers to sell or sells within the
  United States or imports into the United States a
  component of a patented machine, manufacture,
  combination or composition, or a material or
  apparatus for use in practicing a patented process,
  constituting a material part of the invention,
  knowing the same to be especially made or
  especially adapted for use in an infringement of
  such patent, and not a staple article or commodity
  of commerce suitable for substantial noninfringing
  use, shall be liable as a contributory infringer.
 Substantial noninfringing uses?


• Claim specifies catheter opening
  location

• Are there noninfringing uses of
  the defendant’s catheter?
          Casebook, p. 918
[O]n this record a reasonable jury
  could find that, pursuant to the
  procedure described in the first of
  the fact patterns (a noninfringing
  procedure), there are substantial
  noninfringing uses for the ACS
  catheter.
  Global-Tech Appliances v. SEB


• 131 S. Ct. 2060 (2011)
                   Facts

• SEB – French company with innovative deep
  fryer technology

• US Patent 4,995,312

• Sunbeam  Pentalpha/Global-Tech
  [Outsourced design of competitive product]
     Infringement law/strategy

• Why sue a party who is not a direct infringer?
  – Business reasons: Don’t offend
    customers/distributors
  – Foreign bias concerns
• How does inducement/contributory
  infringement come into play?
  – Must decide under case law whether adding non-
    direct infringers leaves a viable case
  Pentalpha/Global-Tech Product
       Clearance Procedure

• Pentalpha did not tell lawyer that it had
  copied directly from SEB design

• Attorney failed to find SEB patent in search
  prior to issuing opinion letter

• Willful infringement relevance
        Infringement theories

• Direct infringement: Pentalpha itself made,
  used and perhaps sold some infrginging
  copies of the SEB design

• Indirect: Pentalpha induced its contractual
  partners/branded buyers (Sunbeam,
  Fingerhut, Montgomery-Ward) to use and sell
  infringing copies
         Inducement standard

• Some level of knowledge (scienter) is
  required for indirect infringement

• The specific act of the accused party is
  attenuated, not directly listed among the
  prohibited menu of activities; so to even out
  the analysis some knowledge is required (“I
  know my acts will lead you to infringe.”)
     Federal Circuit standard


Court should find infringement where
 defendant “deliberately disregarded
 a known risk that SEB had a
 protective patent.”
     Conflicting precedent: P. 45

In Aro II, a majority held that a violator
  of § 271(c) must know “that the
  combination for which his component
  was especially designed was both
  patented and infringing,” 377 U.S., at
  488, and as we explain below, that
  conclusion compels this same
  knowledge for liability under §
  271(b).
             Holding – p. 46
[W]e agree that deliberate indifference to a
 known risk that a patent exists is not the
 appropriate standard under § 271(b). We
 nevertheless affirm the judgment of the
 Court of Appeals because the evidence in
 this case was plainly sufficient to support a
 finding of Pentalpha’s knowledge under
 the doctrine of willful blindness.
         Willful Blindness


• Given the long history of willful
  blindness and its wide acceptance in
  the Federal Judiciary, we can see no
  reason why the doctrine should not
  apply in civil lawsuits for induced
  patent infringement under 35 U.S.C.
  § 271(b).
             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. We think these
  requirements give willful blindness an
  appropriately limited scope that
  surpasses recklessness and negligence.
Infringement checklist

           • Single entity?
           • Perform
             infringing
             act?
           • In US?
                 35 U.S.C. § 271(g)
Additional Protection for Product Made By
Process Patents: Import Into the United States or
Offer to Sell, Sells or Uses Within the United
States a Product Which is Made By a Process
Patent.
   • Importation Must Occur During Term of
     Patent
   • Product Made by Process Not Considered
     As Such After (i) materially changed by
     subsequent process, or (ii) becomes trivial
     and nonessential component of another
     product
September 2000                               43
                271 USC (f)(1)
Whoever without authority supplies or causes to
 be supplied in or from the United States all or a
 substantial portion of the components
 of a patented invention, where such components
 are uncombined in whole or in part, in such
 manner as to actively induce the combination of
 such components outside of the United States in
 a manner that would infringe the patent if such
 combination occurred within the United States,
 shall be liable as an infringer.

				
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posted:5/11/2013
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