On March 3, 2011, the Supreme Court of the United States of America heard oral arguments regarding the issue of intent in an inducing patent infringement case.  Traditionally, actual knowledge of patent infringement has been a requirement to prove the requisite intent in patent infringement inducement. 

New legal standard on horizon?

The “actual knowledge” standard may no longer be law.  The US Supreme Court will decide the issue of intent when it releases its opinion in the case of Global-Tech Appliances, Inc. v. SEB S. A. 

In this case, the defendant copied a product; and, had their attorney research to determine whether there was a patent violation without telling him that they had indeed copied the product.  The attorney issued a freedom-to-operate opinion and production proceeded.

What is inducing patent infringement?

To nutshell patent infringement inducement:  Under 35 U.S.C. § 271(b), "[w]hoever actively induces infringement of a patent shall be liable as an infringer."  So, if an entity produces a product that they know a customer will use in a certain way, violating a patent, that entity is inducing patent infringement by a third party.

Actual knowledge versus deliberate indifference

In other words, an entity which sells a product, knowing the end use of that product is a patent infringement is guilty of inducing patent infringement.  Traditionally, it has been held that the inducer must have had actual knowledge of the patent’s existence and the subsequent violation. 

This may no longer be true and entities which demonstrate “deliberate indifference” to potential patent infringement satisfy the knowledge requirement for infringement according to the U.S. Court of Appeals for the Federal Circuit (February 5, 2010) in the Global-Tech Appliances, Inc. v. SEB S.A.

Why this case is so important

This case is highly important because it will provide guidance to how much research must be done before importing goods into the United States as well as by sellers of components of finished products.

SEB S.A. argues that party could be held liable for inducing infringement merely by failing to conduct a patent search and/or securing a non-infringement opinion.

Can this case be distinguished?

Will other manufacturers be able to distinguish themselves from the Global-Tech Appliances, Inc. v. SEB S. A. case?  In Global-Tech, the federal court found “deliberate disregard” for the existence of a patent because of three facts:

1.  Global-Tech bought and copied a deep fryer that was on the market.

2.  Global-Tech failed to tell their attorney that they copied the product when they hired him to research and issue a freedom-to-operate opinion.

3.  The president of Global-Tech had studied patent law.

Where to get help if your patent has been infringed or if you want to be sure that your work is not an infringement

We are watching current issues in patent law and the Global-Tech Appliances, Inc. v. SEB S. A. case closely.

If your patent has been infringed or if you have an invention and want to be sure that you are not infringing someone else’s patent, hire an attorney who focuses his or her practice on patent law.  We at Cutler Law Firm focus on our practice on representing people just like you.  Not only do we help you to obtain your patents for your inventions, we help you protect your patents and get the compensation that you deserve. 

If you have questions about patents and patent infringement or need help, call our offices now at 605-335-4950 or email us.