Inducing Patent Infringement

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By Rich Stim

35 USC § 271(b) provides that an act of actively inducing another to infringe a patent shall itself be treated as an act of infringement. To prove inducement to infringe, the patent owner must demonstrate some positive act of inducement by the person being sued. That may include instructing, directing or advising the third party as to how to carry out a infringement.

What is the standard for inducing infringement? The Supreme Court looked at the issue in 2011. A company, SEB, patented a “cool touch” deep-fryer whose exterior was cool to the touch. GlobalTech Appliances, operating outside the U.S. copied everything but the cosmetic aspects of the SEB deep fryer. GlobalTech then branded these deep fryers for sale by Sunbeam, Montgomery Ward, and others. SEB sued GlobalTech for inducing others to infringe its cool-touch patent. GlobalTech defended itself by arguing that it couldn't induce others to infringe because it had no actual knowledge it was infringing SEB's patent. (GlobalTech had vetted its device with a patent attorney but had failed to disclose to the attorney that their device was copied directly from the SEB deep-fryer.) The Supreme Court ruled for the patent owner, SEB. The court said that inducing infringement required knowledge of the existing patent, but that knowledge could be inferred using a legal standard referred to as "willful blindness." As the Court stated: Many criminal statutes require proof that a defendant acted knowingly or willfully, and courts applying the doctrine of willful blindness hold that defendants cannot escape the reach of these statutes by deliberately shielding themselves from clear evidence of critical facts that are strongly suggested by the circumstances.” The Court went on to distinguish willful blindness from a lower court's standard known as "deliberate indifference." As for the differences, the bottom line is that when asking an attorney to render a legal opinion (Does my deep fryer infringe?), don't hide information (like, 'I copied this from another deep fryer'). (GlobalTech Appliances v. SEB, __U.S. __ (2011).

A patent is said to be in force (in effect) if all of the following are true:

  • The patent’s statutory term has not yet expired.
  • Appropriate maintenance fees have been paid when due.
  • The patent has not been ruled invalid by the U.S. Patent and Trademark Office or a court.

Even when a patent is no longer in force, it still is considered prior art when determining if a later invention qualifies for a patent.