Supreme Court's decision in Global-Tech
Appliances, Inc. v. SEB, S.A, 2011 U.S. LEXIS 4022 (U.S. May 31, 2011) [enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE Free Case Law]
clarifies the mental state necessary for a defendant to be liable for
"actively inducing" patent infringement under 35 U.S.C. § 271(b). In this Analysis, Mary LaFrance examines
the implications of this opinion. She writes:
a threshold matter, the Court held that active inducement under § 271(b)
requires intent. While § 271(b) does not mention intent, the verb
"induce" and the adverb "actively" both imply intent to
bring about a certain result. The more difficult question was whether the
inducing party must intend to bring about every aspect of the particular
result. To clarify this issue, the Court analogized to a salesman who induces a
customer to purchase a car. If the car happens to be damaged, it can be said
that the salesman induced the customer to buy a damaged car. Does this mean
that the salesman knew that the car was damaged, and intended the customer to
buy it in that condition? Or does it mean only that the salesman simply
intended the customer to buy the car, and was unaware that it was damaged? Similarly,
§ 271(b) could be interpreted in two ways: It could make a defendant liable for
inducing someone to make, sell, use or import a product, without the inducer
necessarily knowing that the product is patented. Or it could impose liability
only when the inducing party knows that these activities will be infringing.
the language of § 271(b) does not resolve this ambiguity, the Court considered
the legislative history of the patent infringement provisions, both before and
after the Patent Act of 1952.
§ 271(b) and § 271(c) "share a common origin" in the pre-1952 case
law, the majority in Global-Tech
concluded that "it would be strange to hold that knowledge of the relevant
patent is needed under § 271(c) but not under § 271(b)." Accordingly, the
Court held that induced infringement under § 271(b) requires knowledge
"that the induced acts constitute patent infringement."
the Court squarely rejected the Federal Circuit's conclusion that the knowledge
requirement of § 271(b) was satisfied by proof of "deliberate
indifference to a known risk that a patent exists."
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