Direct Infringement

A patent is directly infringed by “whoever without authority makes, uses, offers to sell, or sells” the patented invention.[1] In this situation the patent is considered “directly” infringed because the party that actually committed the infringement is the party that is liable. Direct infringement is a strict liability offense, and therefore liability depends only on whether the actions necessary for infringement have occurred.[2] Even if an infringer was unaware the infringed patent existed and otherwise did not intend to infringe the patent, the infringer is still liable.

It is well established that “[d]irect infringement requires a party to perform or use each and every step or element of a claimed method or product.”[3] The courts have expressed inconsistent views, however, as to whether direct infringement can occur when more than one party acts jointly to perform all of the steps of a claim.

Direct infringement can also be found when a patent is vicariously infringed through an agency type relationship.[4] This occurs when one party, acting under the control of another party, performs all of the steps of a claim. In this situation the controlling party assumes all liability for direct infringement, rather than the party that actually performed the infringement.[5]

Indirect Infringement

A party that induces or contributes to another party’s direct infringement of a patent may also be liable for indirect infringement. Direct infringement is distinct from indirect infringement, which attaches liability to a party that did not perform all the acts necessary to constitute infringement.[6] There are two statutorily recognized means of indirect infringement, induced and contributory.[7]

Section 271(b) states that “[w]hoever actively induces infringement of a patent shall be liable as an infringer.”[8] Inducement occurs when a party “actively and knowingly . . . aid[s] and abet[s] another’s direct infringement of the patent.”[9] For an inducer to be found liable there must be evidence that the inducer “knew or should have known” its inducement would result in the direct infringement of a known patent.[10] Liability for inducement does not require that the party induced to commit the infringement was acting as “an agent of the inducer or be acting under the inducer’s direction or control.”[11] If the induced party was acting as an agent or under the inducer’s direction or control, the inducer would instead be vicariously liable for direct infringement.[12]

Contributory infringement concerns the sale of a component of a patented invention. Liability under contributory infringement requires a showing that the seller had knowledge that the sold component was designed to be used to infringe the patented invention and that it was not suitable for any “substantial noninfringing use.”[13]

Both types of indirect infringement, inducement and contributory, are distinct from direct infringement in that neither is a strict liability offense. Thus, liability for indirect infringement requires a showing that the parties intended to or knowingly caused infringement of the patent.[14]

An especially important requirement for indirect infringement is that direct infringement has also occurred.[15] As the majority stated in the Federal Circuit’s en banc holding in Akamai v. Limelight, “[t]here is no such thing as attempted patent infringement, so if there is no infringement, there can be no indirect liability for infringement.” Uncertainty remains, however, about what actions qualify as direct infringement. Specifically, does direct infringement occur when multiple parties, acting in concert, perform all of the steps of a claim? Or must a single party perform all the steps?

Hopefully the Supreme Court will be able to answer these questions when it issues its upcoming decision in Limelight Networks, Inc. v. Akamai Technologies, Inc.

[1] 35 U.S.C. § 271(a).

[2] Hilton Davis Chemical Co. v. Warner-Jenkinson Co., Inc. (1995) (“Infringement is, and should remain, a strict liability offense.”).

[3] BMC Res., Inc. v. Paymentech, L.P., 498 F.3d 1373, 1378 (Fed. Cir. 2007) overruled by Akamai Technologies, Inc. v. Limelight Networks, Inc., 692 F.3d 1301 (Fed. Cir. 2012) citing Warner-Jenkinson Co., Inc. v. Hilton Davis Corp., 520 U.S. 17, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997)

[4] Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1329 (Fed. Cir. 2008).

[5] Id.

[6] Chisum on Patents § 17.04 (2012).

[7] 35 U.S.C. § 271(b & c).

[8] Id. at § 271(b).

[9] Chisum at § 17.04.

[10] DSU Med. Corp. v. JMS Co., Ltd., 471 F.3d 1293, 1304 (Fed. Cir. 2006) quoting Manville Sales Corp. v. Paramount Systems, Inc., 917 F.2d 544, 554 (Fed.Cir.1990).

[11] Akamai Technologies, Inc. v. Limelight Networks, Inc., 692 F.3d 1301, 1308 (Fed. Cir. 2012).

[12] Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1329 (Fed. Cir. 2008).

[13] “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 non-infringing use, shall be liable as a contributory infringer.” 35 U.S.C. 271(c).

[14] 35 U.S.C. § 271(b & c).

[15] Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518, 526 (1972).