Patents are intended to spur innovation by providing inventors of new, non-obvious, and useful technologies a period of exclusive rights in exchange for the full disclosure of their invention to the public. Many will understand that they face potential lawsuits and damages if they act as an “unscrupulous copier,” taking the ideas from a patent and selling a copy-cat product. But what about the “innocent infringer”—someone that might practice a patent, or encourage others to perform activities infringing a patent, but without any knowledge of the patent rights infringed? Are they still liable for damages if they infringe a patent?
The short answer is yes: one can infringe a patent and be liable for damages without having any knowledge of the patent the committed the infringing act. Accordingly, the tort of patent infringement is often characterized as a strict liability tort.1 Strict liability, in its purest form, is liability without fault.2 It holds a defendant responsible for their actions regardless of their intent at the time of the action. Patent law is consistent with this definition of strict liability as direct infringement has long been understood to require no more than the unauthorized use of a patented invention.3 But patent law is only consistent with this standard in part. Patent infringement does not always impose the strict liability standard like the standard is used in general tort law. This often leaves patentees and potential infringers wondering whether there is such a thing as innocent and what protections an innocent infringer may have.
Section 271 of the Patent Act defines the various ways a patent may be infringed. Patent infringement occurs when an individual or entity violates one or more claims of a valid patent, directly or indirectly, without permission of the patent holder.4 This article explores how strict liability applies to patent infringement and how patent law protects innocent infringers.
Direct Infringement
Patent infringement is most similar to a strict liability tort when there is direct patent infringement. One commits direct infringement by making, using, selling or offering for sale, within the United States, or importing into the United States, during the term of the patent, the invention defined by a patent’s claims, without the patent owner’s authority.5 For direct infringement, the infringer’s knowledge or intent is irrelevant to liability. Although knowledge of the patent and intentional infringement could be facts that would heighten the damage award through a finding of willfulness, an innocent infringer would still be liable and owe damages for any direct patent infringement.
In specific circumstances, however, the innocent infringer may see a reduction in monetary damages. If a patentee sells a product practicing an asserted patent, and fails to mark the patent number on the product (or accompanying literature, or a marking website), the patentee cannot recover damages until after it notified the infringer of the infringement and continued to infringe thereafter.6 This notice could take the form of a cease and desist letter or the filing of a lawsuit.7 Damages occurring before notice will not be awarded.8 This, however, only applies if the patentee is making a physical product practicing the patent.9 If no product is being made, damages are not limited.
This framework illustrates how the Patent Act is at least somewhat sympathetic to an innocent infringer in this narrow case. It should be noted, however, that the marking requirement precludes damages for not only the innocent infringer, but others who knew about the patent (for reasons other than proper notice from the patent). The rationale for this limitation on damages is that if someone sees a product on the market, a competitor should be free to copy such a product without risk of patent liability, unless the patentee informs the public that a patent covers the product. This is true whether or not the accused infringer ever actually saw the unmarked product, and seeks to encourage patentees to provide proper notice. But the marking requirement only limits damages if the patentee sells a physical device practicing a patent and fails to mark the patent number on the device. An accused infringer will not benefit if the patentee does not sell any product. The courts have characterized the marking requirement as: (1) helping to avoid innocent infringement, (2) encouraging patentees to give notice to the public that the article is patented, and (3) aiding the public to identify whether an article is patented.10
Indirect Infringement
Indirect patent infringement provides more protection for the innocent infringer. This is because the alleged infringer must have knowledge of the existence of the patent in order to be held liable for indirect infringement.11 In other words, an innocent infringer can no longer be considered ‘innocent’ once he or she knows that the patent exists. This knowledge requirement is generally satisfied by direct evidence that the accused party was aware of the patent’s existence, a notice or cease and desist letter informing the accused of the patent, or the filing of the complaint.12 Requiring knowledge of the patent ensures that innocent infringers cannot be held liable for indirect infringement if they were genuinely unaware of the patent’s existence.
Indirect infringement can occur when a party, upon having knowledge of the infringed patent, acts in some manner to enable or encourage conduct by another party to directly infringe the patent.13 The knowledge requirement is another way in which patent law departs from strict liability since the accused’s state of mind is considered. Liability for indirect infringement, however, also depends on a finding that the defendant’s actions led to a direct infringement of the plaintiff’s patent.14 In this way, strict liability continues to appear throughout § 271. Two examples of indirect infringement, induced infringement and contributory infringement, are set forth in §§ 271(b) and (c) of the Patent Act.15 Each is discussed below.
Induced Infringement
Under § 271(b), anyone who “actively induces infringement of a patent” is liable for infringement.16 Induced infringement requires that the accused infringer knowingly induced infringement and possessed specific intent to encourage another’s direct infringement.17 Although the statutory text does not specifically include “intent” as a requirement, the U.S. Supreme Court has explained that inducement must involve the taking of affirmative steps in order to arrive at the desired result, thereby interpreting “actively” to require a specific intent.18 In addition to requiring the innocent infringer to have knowledge of the existence of the infringed patent, by interpreting inducement to require a level of intent, the Patent Act further protects the accused by considering their state of mind with respect to determining whether the acts encouraged infringement.
In an effort to clarify the requisite intent, inducement requires knowledge of the patent and knowledge that the induced acts constitute patent infringement.19 In other words, not only does the plaintiff need to prove that the defendant knew of the existence of the patent, but the plaintiff also needs to prove that the defendant knew its conduct would induce another to directly infringe the patent. This interpretation opens the door for many ways in which an innocent infringer can attempt to show they did not actively induce another to directly infringe the claimed subject matter. Examples of acts inducing infringement can be as simple as advertisements and user manuals directed to a class of direct infringers, as long as the defendant knew of the existence of the patent and knew its advertisements could induce another to directly infringe the patent.20 Accordingly, a truly innocent “infringer” should not be liable for inducing infringement. In fact, they are not even an infringer because they did not commit any infringement due to their lack of knowledge.
Contributory Infringement
Strict liability is tangled within contributory infringement as well. The Federal Circuit has consistently stressed that there can be no contributory infringement without a finding of direct infringement.21 However, similar to induced infringement, contributory infringement also requires a finding that the accused infringer had knowledge of the existence of the patent infringed. In this manner, an innocent “infringer” is afforded protections in the same way an innocent “infringer” is afforded protections from liability for induced infringement. Neither is truly an infringer due to the lack of knowledge.
Although intended as complimentary provisions, contributory infringement is different from induced infringement in that it deals with the situation where a seller would sell a component for use in a product that infringes upon a patentee’s claimed subject matter.22 Section 271(c) states, “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.”23 Section 271(c) explicitly includes an element of scienter, knowing, thereby explicitly providing protections to the alleged contributory infringer. Subsequent case law defined “knowing” within § 271(c) to require knowledge that the component was especially made or adapted for a particular use and knowledge of the patent that provided rights to exclude others from that use.24 Thus, § 271(c) strays from strict liability by considering an accused infringer’s mental state with regard to knowledge of the component in relation to a particular use and knowledge of the existence of the patent covering that use. In this manner, an alleged infringer is provided additional protections by not only requiring knowledge of the existence of the patent, but also requiring proof of a connection between knowledge of the existence of the patent and the understanding of how the infringed component will be used in an infringing manner.
Conclusion
Direct infringement is not sympathetic to the innocent infringer. Under § 271(a), a defendant that directly infringes a plaintiff’s claimed subject matter is strictly liable for its infringing conduct. An indirect innocent infringer cannot be held liable for indirect infringement if the alleged infringer does not have knowledge of the existence of the infringed patent. This is because once you have knowledge of the existence of the patent, one can longer be considered “innocent.” In addition to knowledge of the existence of the patent, both §§ 271(b) and (c) require an additional degree of intent or knowledge to prove induced or contributory infringement. However, arguing insufficient intent or knowledge is not straightforward as the requisite scienter for induced and contributory infringement can be fact specific.
As if patent infringement is not already complicated enough, this is just the subsection a, b, c’s of infringement under §§ 271. The Patent Act includes many more ways that someone can infringe a patentee’s claimed subject matter, based on actions taking place inside or outside the United States and based on the type of claimed subject matter owned. Given the specialized nature of patent law, practitioners attempting to determine potential liabilities for infringement should thoroughly consider these issues with experienced patent counsel.
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1 575 U.S. 632, 639 (2015).
2 See e.g., Restatement (Second) of Torts §§ 504–524 (1997).
3 See e.g., Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 760 (2011).
4 See 35 U.S.C. § 271.
5 See 35 U.S.C. § 271(a).
6 See 35 U.S.C. § 287(a).
7 See Funai Elec. Co. v. Daewoo Elecs. Corp.,616 F.3d 1357, 1373 (Fed. Cir. 2010).
8 See 35 U.S.C. § 287(a).
9 Id.
10 See Rembrandt Wireless Techs., LP v. Samsung Elecs. Co. Ltd., 853 F.3d 1370, 1383 (Fed. Cir. 2017).
11 See Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 764 (2011). See also DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1306 (Fed. Cir. 2006).
12 See e.g., Simplivity Corp. v. Springpath, Inc., 2016 WL 5388951, at *9 (D. Mass. July 15, 2016); Black Hills Media, LLC v. Pioneer Corp., 2013 WL 8540141, at *2 (C.D. Cal. Sept. 24, 2013); Tonal
Systems, Inc. v. iFIT Inc., 2022 WL 951549, at *1 (D. Del. Mar. 30, 2022).
13 See 35 USC §§ 271(b) and (c).
14 Limelight Networks, Inc. v. Akamai Techs., Inc., 572 U.S. 915, 915 (2014).
15 See 35 USC §§ 271(b) and (c).
See 35 USC §§ 271(b)
17 DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1306 (Fed. Cir. 2006).
18 Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 760 (2011).
19 Commil USA, LLC v. Cisco Sys., Inc., 575 U.S. 632, 637 (2015).
20 See Power Integrations v. Fairchild Semiconductor Int’l, Inc., 843 F.3d 1315, 1335 (Fed. Cir. 2016).
21 See e.g., i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 850 (Fed. Cir. 2010), aff’d, 565 U.S. 91 (2011).
22 Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1486 (Fed. Cir. 1990).
23 See 35 U.S.C. § 271(c).
24 Id.
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Jon Bachand is a litigation partner in the Washington, D.C. office of Knobbe Martens, where he helps companies protect their most important products and innovations. Jon focuses on representing medical device and pharmaceutical companies in adversarial patent proceedings.
Brittany Penn is an associate at Knobbe Martens whose practice primarily focuses on patent litigation.