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Supreme Court to Rule on Intent in Active Inducement Cases
- 11/8/2010

A party that does not infringe a patent directly, that is by its own activity, may still be held liable for patent infringement if that party actively induces another party to infringe the patent.  Courts have wrestled with the standard for determining whether a party should be liable for actively inducing infringement.  Now the United States Supreme Court will weigh in on the issue.

35 U.S.C. Section 271(b), which provides for liability for one who “actively induces infringement of a patent,” has long been interpreted to require intent.  In the past, a plaintiff needed to show that a defendant knew or should have known of the particular patent that was infringed in order to show active inducement.  More recently, the Court of Appeals for the Federal Circuit (“Federal Circuit”) lowered this standard in SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360 (Fed. Cir. 2010) (“SEB S.A.”).  The Federal Circuit decided in that case that a plaintiff can meet its burden of showing that a party knew of an infringed patent simply by showing that party’s “deliberate indifference” to the existence of the patent.

Global-Tech, one of the defendants in SEB S.A., has now appealed to the Supreme Court to overturn the Federal Circuit’s decision.  Global-Tech has also requested that the Court impose a much higher standard of intent requiring “purposeful, culpable expression and conduct to encourage an infringement.”  Global-Tech’s position is supported by a group of intellectual-property law professors, who have submitted an amicus curiae brief to the Supreme Court. 

Oral arguments in the case will take place during the current term, and the final decision is expected by summer 2011.  Hopefully, the decision will provide useful guidance for clients to avoid being held liable for inducing infringement. 

Be sure to check back with the Ostrolenk Faber web site for developments in connection with this and other important cases.    

Click Here for the complete SEB S.A .v. Montgomery Ward & Co., Inc. Federal Circuit Opinion.

Click Here to for a copy of 35 U.S.C. Section 271.



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