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United States: Supreme Court To Decide Intent Standard For Inducing Patent Infringement

Publication Date: 
March 03, 2011
Source: 
Mondaq Business Briefing
Author: 
Deanne Maynard and Peter J. Stern

Professor Mark Lemley was one of more than 25 academics who filed an amicus brief in support of certiorari in the case of Global-Tech Appliances, Inc. v. SEB S. A. The following article by Deanne Maynard and Peter J. Stern in Mondaq Business Briefing covered the Supreme Court case:

Today, the U.S. Supreme Court heard oral arguments in a patent case to determine the standard of intent necessary to establish liability for inducing patent infringement under 35 U.S.C. ยง 271(b).1

WHY TO WATCH THIS CASE

The Supreme Court's ruling in Global-Tech Appliances, Inc. v. SEB S.A. will provide guidance to manufacturers importing goods into the United States and to domestic sellers of component parts of finished products. The petitioners, Global-Tech Appliances, Inc., and Pentalpha Enterprises, Ltd. (collectively, "Global-Tech"), and amici curiae have asked the Supreme Court to determine the extent to which commercial sellers must educate themselves about patents potentially relevant to their products in order to avoid liability for inducement of infringement. Global-Tech argues that if the Federal Circuit's decision is allowed to stand, a party could be held liable for inducing infringement merely by failing to conduct a patent search and/or securing a non-infringement opinion.

...

The parties then appealed the case to the Federal Circuit where, in the words of an amicus brief in support of certiorari filed by Stanford University Professor Mark Lemley and 25 other academics, the Federal Circuit "once again muddied the waters" regarding "the culpable state of mind necessary to show induced infringement under section 271(b)."7 Despite the sparse record from the district court regarding inducement of infringement, the Federal Circuit discussed the topiclength.

...

Stanford University Professor Mark Lemley has submitted a brief joined by 40 other academics, urging the Court to require that an inducer must "be aware of a patent and encourage an act that it knows or should know would infringe that patent."21 Cisco Systems, Dell, and Intel argue that awareness of the patent must be through actual and not constructive knowledge, to "'absolve[] the equivocal conduct of selling an item with substantial lawful and unlawful uses, and limit[] liability to instances of more acute fault than the mere understanding that some of one's products will be misused.'"22 Comcast and other media and technology companies similarly urge reversal, arguing that historically, "defendants could be held liable for contributing to infringement only if they knew that the acts to which they contributed were, in fact, infringing."23 In contrast, Professor Ted Sichelman of the University of San Diego and other law professors argue that inducement should require only the specific intent to cause acts constituting direct infringement, and should not include a mental state with respect to whether the acts infringe a patent.24.