Infringement may be direct or indirect. In direct infringement, a person makes, uses, sells, offers for sale, or imports the patented product or practices the patented method. In indirect infringement, the person induces another to infringe (i.e., active inducement of infringement) or contributes to the infringement by another.
In Global Tech. v. Pentalfa, the narrow issue related to the threshold level of “intent” to impart liability for active inducement of patent infringement by another. Do you have to have a specific intent to cause another to infringe a patent? Is willful blindness sufficient? How about negligence?
The statute for active inducement of infringement states that “Whoever actively induces infringement of a patent shall be liable as an infringer.” Although the term “intent” is not used in the statute, the Court held that some form of intent is a necessary component to find liability for active inducement of patent infringement. The issue with the statute is that it could be read to require “merely that the inducer lead another to engage in conduct that happens to amount to infringement.” Or, the statute could be read to mean that “the inducer must persuade another to engage in conduct that the inducer knows is infringement.”
In resolving the issue, the Court looked to statutory history, rules related to contributory infringement and stare decisis. The Court held that liability for active inducement of patent infringement requires knowledge that the induced acts constitute patent infringement. In the present case, the defendant did not have actual knowledge that the acts that defendant was encouraging amounted to patent infringement. Nonetheless, the Court held that the defendant was “willfully blind” to such fact and that the defendant was just as culpable as one having actual knowledge.
To find willful blindness, “(1) the defendant must subjectively believe that there is a high probability that a fact exists and (2) the defendant must take deliberate actions to avoid learning of that fact.” “Under this formulation, a willfully blind defendant is one who takes deliberate actions to avoid confirming a high probability of wrongdoing and who can almost be said to have actually known the critical facts. By contrast, a reckless defendant is one who merely knows of a substantial and unjustified risk of such wrongdoing, and a negligent defendant is one who should have known of a similar risk but, in fact, did not.”
In Global-Tech, the defendant recognized a popular product which sold very well in the United States. Defendant purchased a foreign version of the popular U.S. product to reverse engineer the product knowing that such products would not have U.S. patent markings. Defendant copied all but the cosmetic aspects of the product. In obtaining a right-to-use opinion from a U.S. patent attorney, defendant did not notify its attorney that their product was simply a knock-off of the popular product. Hence, the Court held that defendant was willfully blind and liable for active inducement of patent infringement. Global-Tech Appliances, Inc. v. SEB, 563 U.S. ___ (2011).
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