Federal Circuit considers intent required for inducing infringement en banc

December 14, 2006
Post by Blog Staff

The Federal Circuit resolved a perceived conflict in its case law regarding the necessary level of intent required for a defendant to be found liable for inducing infringement of a patent. The court considered one subsection of DSU Medical Corp. v. JMS Co. en banc to resolve the conflict. The court held that to prove the intent necessary for liability for inducing infringement, there must be "evidence of culpable conduct, directed to encouraging another's infringement, not merely that the inducer had knowledge of the direct infringer's activities." More details of the case after the jump.The case revolved around two patents directed toward prevention of needle-stick injuries. The inventions provide needle-guards for standard winged-needle sets used for injections. The patent claims required a fully-assembled structure, that is, the guard with the needle assembled within. The allegedly infringing product was sold without a needle, and a needle was inserted later, by either the health care provider or the distributor. JMS purchased the allegedly infringing needle guards from another company, ITL, in Singapore and Malaysia, and generally closed the guards around needles before distributing them to customers. ITL escaped liability for both contributory infringement because it did not engage in any acts within the United States, as there was no evidence that it sold any guards to JMS in the United States, a necessary requirement for contributory infringement. On the issue of inducing infringement, the court first addressed what it perceived as a conflict in its prior precedent on the necessary intent for inducement. After discussing the applicable case law, the court noted that in order to establish liability for inducing infringement, the "patent holder must prove that once the defendants knew of the patent, they actively and knowingly aided and abetted another's direct infringement." It is not enough to know about the infringing acts; instead there must be "specific intent and action to induce infringement." Additionally, the court noted that the Supreme Court had cited this standard for inducement liability with approval in Metro-Goldwyn-Mayer Studios, Inc. v. Grokster, Ltd., a copyright case dealing with inducing infringement liability under copyright law. Based on the Supreme Court's application of the law of inducement of patent infringement to copyrights, the Federal Circuit held that, to the extent a conflict existed, the inducement law cited by the Supreme Court should control. As a result, the court summarized the requirement by holding that "inducement requires evidence of culpable conduct, directed to encouraging another's infringement, not merely that the inducer had knowledge of the direct infringer's activities. Another noteworthy holding is that the court stated that while an infringement may have a foreseeable, and therefore compensable, effect on future contracts, such a situation cannot occur when the future contract is for a non-infringing substitute for the patented product. To read the full decision, click here.

Post Categories

Comments (0)
Post a Comment

Captcha Image
Return to the Filewrapper Blog

Search Posts


The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.


McKee, Voorhees & Sease, P.L.C. provides this blog for general informational purposes only. By using this blog, you agree that the information on this blog does not constitute legal or other professional advice and no attorney-client or other relationship is created between you and McKee, Voorhees & Sease, P.L.C. Do not consider this blog to be a substitute for obtaining legal advice from a qualified, licensed attorney. While we try to revise this blog on a regular basis, it may not reflect the most current legal developments. We consciously refrain from expressing opinions on this blog and instead, offer it as a form of information and education, however if there appears an expression of opinion, realize that those views are indicative of the individual and not of the firm as a whole.

Connect with MVS

Enter your name and email address to recieve the latest news and updates from us and our attorneys.

Subscribe to: MVS Newsletter

Subscribe to: Filewrapper® Blog Updates

  I have read and agree to the terms and conditions of McKee, Voorhees & Sease, P.L.C.