Liability for patent infringement may arise directly or indirectly. For direct patent infringement liability, a defendant makes, uses, sells, offers for sale or imports a product that infringes a patent. For indirect patent infringement liability, the accused actor is assisting someone else in directly infringing a patent either by inducing them to infringe or by contributing to their infringement. Inducment of infringement and contributory infringement each have special requirements and this case focuses on inducement. For As an example of inducement, a company may be selling sell a standard component to the public with instructions on how to use that component to create a patented combination or to perform a patented method known to the company, thereby knowingly inducing someone to infringein a patented method. The seller of company selling the component is not directly infringing the patented method because the company does not perform all of the claim requirements, but the company is assisting his/her its customers in directly infringing the patented method or combination.
This type of behavior may open the company to indirect patent infringement liability. Under a theory of active inducement of patent infringement, 35 USC § 271(b) recitesstates that “whoever actively induces infringement of a patent shall be liable as an infringer.”
To actively induce infringement by another, the accused party must have the specific intent to encourage another’s infringement. Kinetic Concepts, Inc. v. Blue Sky Medical Group, Inc., (Fed. Cir. 2009) provides a discussion as to when specific intent exists. In Kinetic Concepts, Inc., the technology at issue involved an apparatus and a method for treating a wound. During testimony, the co founders of the company accused of infringement both testified that they thought the kits that they sold simply performed a prior art method. The jury believed the co founders and found that they did not have the specific intent required for to attach liability for active inducement of patent infringement.
The testimony provided by the co-founders sounds similar to a “practicing the prior art” defense. The Court reiterated that practicing the prior art is not a defense to patent infringement (it may be a basis for invalidity but is not a defense to infringement). However, theythe Court’s decision shows indicated that a defendant’s belief that it can freely practice inventions found in the public domain can support a jury’s finding that the defendant did not have the intent required for actively inducing patent infringement.