Indirect and Foreign Infringement

1. Indirect and Foreign Infringement Prof Merges Patent Law – 4.15.08

2. Infringement • Direct • Indirect

3. 35 U.S.C. § 271(a) (a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.

4. Infringement checklist • Single entity? • Perform infringing act? • In US?

5. Dealing with “missing pieces”

6. Infringement checklist • Single entity? • Perform infringing act? • In US?

7. Indirect infringement: Inducement and contributory infringement 35 USC 271 (b): Whoever actively induces infringement of a patent shall be liable as an infringer.

8. 35 USC 271(c) (c) Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.

9. BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007) When a defendant participates in or encourages infringement but does not directly infringe a patent, the normal recourse under the law is for the court to apply the standards for liability under indirect infringement. Indirect infringement requires, as a predicate, a finding that some party amongst the accused actors has committed the entire act of direct infringement. Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1272 (Fed.Cir.2004).

10. What is required for indirect infringement? • Someone has to directly infringe • The indirect infringer must “control or direct” the infringer’s actions

11. Quick examples • Inducing: instruct on how to perform a process, with intent that customer infringe • Contributory infringement: sell component whose only real use is to infringe

12. Infringement checklist • Single entity? • Perform infringing act? • In US?

13. 498 F.3d at 1381 In this case, for example, BMC could have drafted its claims to focus on one entity. The steps of the claim might have featured references to a single party's supplying or receiving each element of the claimed process. However, BMC chose instead to have four different parties perform different acts within one claim.

14. Paymentech holding • No “joint infringement liability” here; defendant • Solution: draft claims to recite a single infringing entity Citing Mark A. Lemley et al., Divided Infringement Claims, 33 AIPLA Q.J. 255, 272-75 (2005)). 

15. Aro Mfg.

17. Aro I - issues • Indirect infringement • “Reconstruction and repair” doctrine • “Repair” is ok, reconstruction is not • Only applies to bona fide purchasers from licensed sellers

18. Aro II • Ford customer sales: unlicensed • Even “repair” is infringing here • Not a question of exhaustion • Customers infringe: repair “perpetuates the infringing use” - p. 971

19. Aro II • 271(c) “knowledge” • Knowledge: of both patent and infringement • See p. 912 n 8

20. Exhaustion • At issue in current LG v Quanta case argued in Supreme Court • Who is liable in the “chain of possession” of a patented item? When does liability cut off?

21. Infringement checklist • Single entity? • Perform infringing act? • In US?

22. CR Bard

23. Substantial noninfringing uses? • Claim specifies catheter opening location • Are there noninfringing uses of the defendant’s catheter?

25. 35 U.S.C. § 271(g) Additional Protection for Product Made By Process Patents: Import Into the United States or Offer to Sell, Sells or Uses Within the United States a Product Which is Made By a Process Patent. • Importation Must Occur During Term of Patent • Product Made by Process Not Considered As Such After (i) materially changed by subsequent process, or (ii) becomes trivial and nonessential component of another product

26. Infringement checklist • Single entity? • Perform infringing act? • In US?

27. Brown • Territorial limits of patent rights

30. Microsoft v. AT&T

31. 271 USC (f)(1) Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

32. Software as component • Overseas supply

33. (2) Whoever without authority supplies or causes to be supplied in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial noninfringing use, where such component is uncombined in whole or in part, knowing that such component is so made or adapted and intending that such component will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

34. Other complexities • Components imported into US • 271(g)