Court Redefines Knowledge Requirement for Induced Infringement
In a recent decision, authored by Justice Alito and joined by all the other Justices but Justice Kennedy, the Supreme Court redefined the knowledge requirement for finding induced infringement under 35 U.S.C. § 271(b). The case—which centered on a patent for an innovative fryer—provided an opportunity for the Court to elucidate what is required for active inducement of infringement: that the party accused of inducing infringement must have knowledge that the induced acts constitute patent infringement. The Court then further held that this knowledge requirement could be satisfied by willful blindness, a concept borrowed primarily from criminal law.
The Court began its analysis of induced infringement with a brief examination of the statute, finding the text “short, simple, and with respect to the question presented in this case, inconclusive.” The Court did, however, note that the language of § 271(b) included an implied element of intent. The Court then defined precisely what that intent element necessitates, relying on the 1964 decision in Aro Mfg. Co. v. Convertible Top Replacement Co. (Aro II) to support the determination that knowledge under § 271(b) specifically requires knowledge of the patent. The Court reasoned that knowledge for contributory infringement under § 271(c), which was specifically addressed in Aro II, was necessarily the same as knowledge for inducement. Aro II established “that a violator of § 271(c) must know ‘that the combination for which his component was especially designed was both patented and infringed.’” The Court adopted this knowledge standard to § 271(b), concluding that “induced infringement under § 271(b) requires knowledge that the induced acts constitute patent infringement.”
In so deciding, the Court definitively rejected deliberate indifference as the standard for knowledge—the standard the Federal Circuit had relied on in affirming the District Court’s finding of inducement. The Court nevertheless affirmed the Federal Circuit, however, because it concluded that the knowledge requirement could be satisfied by a showing of willful blindness. Stating that such a proposition was supported both by traditional concepts of culpability and by the precedent, the Court held that “defendants cannot escape the reach of [] statutes by deliberately shielding themselves from clear evidence of critical fact that are strongly suggested by the circumstances.” The Court acknowledged that willful blindness is principally a criminal law concept, having been endorsed in that context as early as the Court’s decision in 1899 in Spurr v. United States, 174 U.S. 728. Yet the Court concluded that “[g]iven the long history of willful blindness and its wide acceptance in the Federal Judiciary, we can see no reason why the doctrine should not apply in civil lawsuits for induced patent infringement under 35 U.S.C. § 271(b).”
Ultimately, the Court provided a two-part test for willful blindness for inducement. First, a defendant must subjectively believe there is a high probability that a patent exists and would be infringed, and second must take deliberate actions to avoid knowing that fact. In this case, the facts supported such a finding. Specifically, the defendant was aware when it copied the plaintiff’s product that the product was an innovation in the U.S. market; defendant decided to copy an overseas model of the product, which it knew would not bear U.S. Patent markings; and the defendant decided not to inform an attorney it hired to give a right-to-use opinion that it copied the plaintiff’s product. Taken together, the Court concluded the defendants actions were tantamount to “manufacture [of] a claim of plausible deniability in the event that [defendant] was later accused of patent infringement.”
The Court’s decision provides a definitive—albeit somewhat heightened—standard for proving induced infringement under 35 U.S.C. § 271(b). It remains to be seen how this subjective standard will be applied going forward.
For the complete opinion, click here.
