35 U.S.C. 271(b) provides:
Whoever actively induces infringement of a patent shall be liable as an infringer.
Liability for active inducement of infringement requires specific intent – that the inducer’s actions induced direct infringement and that he knew or should have known his actions would induce actual infringements. DSU Medical Corp. v. JMS Co., Ltd., 471 F.3d 1293, 1304 (Fed. Cir. 2006) (en banc), citing, Manville Sales Corp. v. Paramount Systems, Inc., 917 F.2d 544, 554 (Fed. Cir. 1990); see also Cross Medical Products, Inc. v. Medtronic Sonfamor Danek, Inc., 424 F.3d 1293, 1312 (Fed. Cir. 2005) (“that the alleged infringer knowingly induced infringement and possessed specific intent to encourage another’s infringement”)
In order to prevail on an inducement claim, the patentee must establish first that there has been direct infringement, and second that the alleged infringer knowingly induced infringement and possessed specific intent to encourage another’s infringement.
Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683 (Fed. Cir. 2008) (citations omitted).
Specific intent may be demonstrated by circumstantial evidence. Kyocera Wireless Corp. v. ITC, 545 F.3d 1340, 1354 (Fed. Cir. 2008). The defendant must have intended to cause the acts that constitute the direct infringement and must have known of should have known that its action would cause the direct infringement. Broadcom, 543 F.3d 683. Inducement requires evidence of culpable conduct, directed to encourage another’s infringement, not merely that the inducer had knowledge of the direct infringer’s activities. Id. In order to prove inducement, it must be shown that the inducer is aware of the patents, knows or should have known that the encouraged acts constitute infringement of the patent, and has an intent to cause the encouraged acts. Id.
The requirement that the alleged infringer knew of should have known his actions would induce actual infringement necessarily includes the requirement that he knew of the patent. DSU, 471 F.3d at 1304. Thus, proof is required that once the inducer knew of the patent, he actively and knowingly aided, and abetted another’s direct infringement. DSU, 471 F.3d at 1304 (en banc), citing, Water Technologies Corp. v. Calco, Ltd., 850 F.2d 660, 668 (Fed. Cir. 1988). Knowledge of acts alleged to constitute infringement is not enough – the mere knowledge of possible infringement by others does not amount to inducement; specific intent and action to induce infringement must be proven. DSU, 471 F.3d at 1305, citing, Warner-Lambert Co. v. Apotex, Corp., 316 F.3d 1348, 1363 (Fed. Cir. 2003). In addition to knowledge of the patent, active steps must be taken by the inducer to encourage direct infringer. Advertising an infringing use, and/or instructing how to engage in an infringing use show an affirmative intent that the product be used to infringe. DSU, 471 F.3d at 1305, citing, Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 545 U.S. 913 (2005). Evidence that there exist infringing and non-infringing uses and that the accused inducer taught customers the non-infringing use may evidence no liability for inducement. Acco Brands, Inc. v. ABA Locks Manufacturer Co., Ltd., 501 F.2d 1307 (Fed. Cir. 2007).
Staple of Commerce – N/A
The staple of commerce requirement of contributory infringement does not extend to liability for inducing infringement. Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 545 U.S. 913 (2005). Where an article has infringing and non-infringing uses, but the accused contributory infringer actively promotes the infringing use, as shown by clear expression or other affirmative steps taken to foster infringement, the infringer cannot hide behind the “staple of commerce” theory and liability results. See Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 545 U.S. 913 (2005). Thus, patent infringement liability exists for instances where it may be presumed from distribution of an article in commerce that the distributor intended the article to be used to infringe another’s patent. Id. “In sum, where an article is “good for nothing else” but infringement, there is no legitimate public interest in its unlicensed availability, and there is no injustice in presuming or imputing an intent to infringe.” Id. (citations omitted).
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