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Supreme Court to Determine Standard for Patent Inducement

October 27, 2010

The Supreme Court has granted certiorari in Global-Tech Appliances, Inc. v. SEB S.A. to consider the level of intent required to prove inducement of patent infringement. Patent induced infringement is codified in 35 U.S.C. 271(b).

The issue of induced infringement has been analyzed by the Supreme Court in the copyright realm in MGM v. Grokster. However, the law on induced infringement is less clear in the patent world. Because the two concepts are identical, the Court should require the same level of intent required in Grokster for both copyright and patent inducement. It will be interesting to see if the Court in this case applies the Grokster standard, uses a different standard, or just punts, as it seems to be fond of doing in patent matters.

In Grokster, the Supreme Court imported the concept of induced infringement from patent law:

For the same reasons that Sony took the staple-article doctrine of patent law as a model for its copyright safe-harbor rule, the inducement rule, too, is a sensible one for copyright. We adopt it here, holding that one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties.

In analyzing the imported concept of inducement, the Court held that the standard of intent required is:

…one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties.

Further stating that inducement:

premises liability on purposeful, culpable expression and conduct, and thus does nothing to compromise legitimate commerce or discourage innovation having a lawful promise.

While patent law and copyright law are different, the “purposeful” standard of intent for inducement would ensure that the law of inducement achieves the same goal in both fields. One important difference between the laws is the automatic nature of copyright protection, unlike patents. If the Court does follow Grokster, patent marking will be a valuable tool in an inducement claim to easily disprove a claim of accidental inducement.

The Supreme Court imported the inducement concept into copyright law, in so doing they decided that inducement requires “purposeful, culpable expression and conduct.” It would make sense to re-import this intent standard into patent law because of the identical nature of the laws. With patent cases in the Supreme Court, one never can be sure.

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2 Comments leave one →
  1. November 2, 2010 12:46 am

    Perhaps, after all, it’s not so bad if the Supreme Court punts on patent law issues (as it did in Bilski and other recent patent litigation). After all, as Chief Judge Michel noted in a recent interview with patent expert Gene Quinn, the Justices of the Court aren’t necessarily fluent in patent law and all of the possible ramifications of its own decisions upon patent prosecution and litigation. Therefore, maybe it’s best if they kick the details of most patent law issues back down to the lower courts, and let those courts sort out the specifics.

  2. November 2, 2010 12:16 pm

    I agree, but then again, why grant cert in the first place? I guess they can do some good analysis and help in framing the issue for the lower courts to decide…

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