When attempting to prove inducement of infringement under 35 U.S.C. § 271(b), must the patentee prove that the alleged inducer knew or should have known that his or her actions would induce an actual infringement? Or does it suffice to show that the alleged inducer intended to cause the acts that constituted direct infringement, regardless of whether the alleged inducer also knew or should have know that these acts would constitute direct infringement?
The Federal Circuit definitively answered this question in a pair of fairly recent decisions. In the first decision, DSU Medical Corp. v. JMS Co., 471 F.3d 1293 (Fed. Cir. 2006), the Federal Circuit held that “[t]he plaintiff has the burden of showing that the alleged infringer’s actions induced infringing acts and that he knew or should have known his actions would induce actual infringements.” 471 F.3d at 1304 (quotation omitted). In other words, the “alleged infringer must be shown … to have knowingly induced infringement, not merely knowingly induced the acts that constitute direct infringement.” Id. at 1305. Applying this standard, the Federal Circuit affirmed the trial court’s decision to deny the patentee’s motion for a new trial on the issue of inducement. The court held that the jury was well within the law in finding a lack of specific intent to induce infringement—there was testimony that the alleged inducer had gotten opinion letters of non-infringement from patent counsel, and one of the product designers stated that there was no intent to infringe.
In the second decision, ACCO Brands, Inc. v. ABA Locks Manufacturer Co., 84 U.S.P.Q.2d 1267 (Fed. Cir. Sept. 12, 2007), the Federal Circuit reaffirmed that “[s]pecific intent requires a ‘showing that the alleged infringer’s actions induced infringing acts and that he know or should have known his actions would induce actual infringements.’” 84 U.S.P.Q.2d at 1270 (quoting DSU Med., supra). Applying this test, the Federal Circuit held that the patentee (ACCO) had not proven the threshold requirement of direct infringement. ACCO had presented expert testimony that, although the accused key lock was capable of being used in a non-infringing manner, the “natural and intuitive way to employ the device” was in the infringing manner. The Federal Circuit found this argument unpersuasive, holding that, to prove direct infringement, a patentee must show (1) specific instances of direct infringement; or (2) that the accused device necessarily infringes the patent. The expert testimony met neither prong, since the accused device could be operated in a non-infringing way and the expert did not cite a specific instance of direct infringement. Id.