35 U.S.C. § 271(c) provides:
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.
Staple of Commerce
As codified, the “staple of commerce” requirement means that distribution of a component of a patented device will not violate the patent if it is suitable for use in other ways. Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 485 (1964). “One who makes and sells articles which are only adapted to be used in a patented combination will be presumed to intend the natural consequences of this acts; he will be presumed to intend that they shall be used in the combination of the patent.” Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., 545 U.S. 913 (2005). But sale of an article, though adapted for an infringing use, is also adapted to other and lawful uses, does not lead to contributory infringement liability. Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263 (Fed. Cir. 2004). The “staple of commerce” requirement is an attempt to balance liability for contributory infringement against public interest in having access to the article of commerce. C.R. Bard, Inc. v. Advanced Cardiovascular Systems, Inc., 911 F.2d 670 (Fed. Cir. 1990).
For contributory infringement liability to attach, the patentee always has the burden to show an underlying direct infringement. DSU Medical Corp. v. JMS Co., Ltd., 471 F.3d 1293, 1303 (Fed. Cir. 2006) (liability for contributory infringement or active inducement of infringement is dependant upon the existence of direct infringement). Liability for contributory infringement is then restricted to the specific instances of direct infringement proven. Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263 (Fed. Cir. 2004).
Contributory Infringement Including Acts Outside the U.S.
Generally speaking, U.S. patent laws are aimed to protect against infringement within the United States and do not protect against infringement of a U.S. patent elsewhere in the world. 35 U.S.C. § 271(f) and (g) provide limited exceptions to this by expressly allowing for acts outside the United States to lead to infringement liability for a U.S. patent. Accordingly, contributory infringement liability may be found for Contributors acting outside the United States, in limited circumstances.
In DSU (discussed above), the Court determined that in order to prove contributory infringement for a non-U.S. Contributor, the following needed to be shown:
- Contributor made / sold the accused device.
- The accused device had no substantial non-infringing uses.
- Contributor engaged in conduct (made sales) within the United States that contributed to another’s direct infringement.
- Accused direct infringer engaged in an act of direct infringement on those sales that Contributor made within the United States.
DSU, 471 F.3d at 1303. The DSU Court held that there was no contributory infringement where the evidence revealed: (1) the accused product was assembled into the infringing combination outside of the United States (271(c) did not extend outside the United States) and (2) sales within the United States were for the non-infringing configuration. DSU, 471 F.3d at 1304. Although DSU did not present facts leading to contributory infringement liability for a non-U.S. actor, such liability is not foreclosed, depending upon the acts committed.
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