Contributory infringement of a patent

January 31, 2023

This article has been written by Ms. Amrutha Selvam, an LLB student at Mahatma Gandhi University, Kerala.

Introduction

A patent holder has the exclusive right to prevent others from making, using, selling, or importing an invention without their permission. However, in some cases, the infringement of a patent is not carried out by a single individual or entity, but by multiple parties working together. When an individual or entity provides a product or service that is not itself infringing on a patent but is used by others to infringe on that patent, it is known as contributory infringement. For example, imagine that company A holds a patent for a new type of widget, and company B sells a machine that is specifically designed to make that type of widget. If company B knew or should have known that their machine was being used to make widgets that infringed on company A’s patent, they would be liable for contributory infringement. In other words, company B would be helping company C to infringe on company A’s patent.

It’s important to note that in order for contributory infringement to occur, there must already be an active case of direct infringement by another party. In other words, there must be someone who is actively using the product or service provided by the alleged contributory infringer in a way that infringes on the patent. Additionally, contributory infringement can also occur if an individual or entity actively induces others to infringe on a patent, even if they do not provide any products or services themselves. This topic is particularly relevant to businesses and entrepreneurs who are involved in the development, production, and distribution of products and services that may be covered by patents. Understanding the concept of contributory infringement and how it applies to different situations can help businesses and entrepreneurs avoid liability and protect their own patents.

In this article, we will discuss the concept of contributory infringement in more detail, including the legal requirements for contributory infringement, examples of contributory infringement, and potential defenses against a claim of contributory infringement. We will also explore some related case laws and how courts have interpreted the laws of contributory infringement in different scenarios.

What is Contributory Infringement?

Contributory infringement occurs when an individual or entity provides a product or service that is not itself infringing on a patent but is used by others to infringe on that patent. In other words, it is when someone helps another person infringe on a patent, but does not directly infringe on the patent themselves. For example, if company A holds a patent for a new type of widget, and company B sells a machine that is specifically designed to make that type of widget, company B would be liable for contributory infringement if they knew or should have known that their machine was being used to make widgets that infringed on company A’s patent.

It’s important to note that in order for contributory infringement to occur, there must already be an active case of direct infringement by another party. In other words, there must be someone who is actively using the product or service provided by the alleged contributory infringer in a way that infringes on the patent. Additionally, contributory infringement can also occur if an individual or entity actively induces others to infringe on a patent, even if they do not provide any products or services themselves. For example, if company A holds a patent for a new type of widget, and company B publishes a how-to guide on how to make that type of widget, company B would be liable for contributory infringement if they knew or should have known that their guide was being used to make widgets that infringed on company A’s patent.

It’s also worth noting that a contributory infringer can be held liable for all of the damages caused by the direct infringer, which means that they can be held financially responsible for the entire scope of the damages caused by the direct infringement, even if they did not directly cause all of the damages. Overall, contributory infringement is a complex area of patent law, and it requires careful consideration of the specific facts and circumstances of each case in order to determine whether or not it has occurred.

Case Laws

In the case of Akamai Techs. Inc. v Limelight Networks, Inc., the court held that a defendant could be held liable for contributory infringement if it induced others to infringe a patent, even if the defendant did not practice any of the steps of the claimed method. In another case of Commil USA LLC v Cisco Systems, Inc., the court held that a defendant could be held liable for contributory infringement if it had knowledge that its product was being used in an infringing manner and took no action to stop the infringement.

In the case of LifeScan, Inc. v Shasta Technologies, Inc., the court held that a defendant could be held liable for contributory infringement if it sold a product that was not itself infringing but was specially made or adapted for use in an infringing process.In the case of Uniloc USA, Inc. v. Apple Inc. (2019), the court held that a defendant can be held liable for contributory infringement if it sells a product that is not itself infringing but is made or adapted for use in an infringing process and the defendant knows or should know that the product is being used in an infringing manner.

In the case of Stryker Corp. v. Zimmer, Inc. (2019), the court held that a defendant can be held liable for contributory infringement if it provides a component that is necessary to the infringement of a patent, with the knowledge that the component will be used to infringe the patent. In the case of Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc. (2018), the court held that a defendant can be held liable for contributory infringement if it induces others to infringe a patent, even if the defendant does not itself practice any of the steps of the claimed method. In the case of Finjan, Inc. v. Blue Coat Systems, Inc. (2017), the court held that a defendant can be held liable for contributory infringement if it sells a product that is not itself infringing but is especially made or adapted for use in an infringing process and the defendant knows or should know that the product is being used in an infringing manner.

These cases demonstrate that the courts have taken a broad view of what constitutes contributory infringement and have held defendants liable in a variety of situations, including when they sell products that are adapted for use in an infringing process, provide components that are necessary for infringement, induce others to infringe or fail to take action to stop the infringement.

Challenges

One of the main challenges in proving contributory infringement is demonstrating that the defendant had knowledge that their actions would contribute to the infringement of a patent. This can be difficult to prove, as it requires evidence that the defendant knew or should have known that their actions would lead to infringement. Another challenge is determining the scope of liability for contributory infringement. This can be difficult as the scope of liability can vary depending on the specific circumstances of the case and the actions of the defendant. Additionally, proving causation can also be a challenge in contributory infringement cases. It must be shown that the defendant’s actions were a significant factor in the infringement of the patent and that without their actions, the infringement would not have occurred.

Conclusion

In conclusion, contributory infringement occurs when a person or business provides a material or component that is necessary to the infringement of a patent, with the knowledge that the material or component will be used to infringe the patent. It can also occur when a person or business induces others to infringe a patent, or when a person or business supplies a product that is not itself infringing but is especially made or adapted for use in an infringing process. Proving contributory infringement can be difficult, as it requires evidence of knowledge, the scope of liability, and causation. However, with the help of good legal counsel and evidence, it can be proven in a court of law.

Reference

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January 31, 2023