Inducement of Infringement: Should We Even Think of its Fault Element in Mens Rea Terms?

By Jason Rantanen

The conventional approach to the fault elements1 of indirect and willful infringement is to speak of them in mens rea (or state of mind, if you prefer) terms.  But describing fault this way is largely nonsensical when dealing with modern indirect and willful infringement.  In my current work-in-progress, I suggest that the fault element of these doctrines should instead be conceived of as an objective inquiry that focuses on the degree of risk of infringement to a person in the accused party’s shoes.  Given the Supreme Court's grant of certiorari this morning in Global-Tech v SEB, questioning whether we should even be talking about the issue in mental state terms seems particularly timely.

Inducement of infringement is the poster child for the problems associated with viewing the fault elements for certain doctrines in mens rea terms.  For years, both the Federal Circuit and scholars struggled to define the state of mind necessary for inducement.  Did it require intent to infringe a patent, or just intent to cause the underlying acts that constituted infringement?  Even after the court settled this issue in DSU Medical, it continued to conceive of the requirement in mental state terms – in i4i v Microsoft, for example, the court stated that inducement requires that the accused party “knowingly induced infringement and possessed specific intent to encourage another’s infringement.”   598 F.3d 831, 851 (Fed. Cir. 2010).  And perhaps the strongest evidence of how deeply this view is entrenched is the Court’s Question Presented in SEB, which assumes that the fault element must be described in mental state terms – asking whether the accused infringer must possess a certain “state of mind,” be it one of deliberate indifference or purposeful conduct.

In my paper, I offer several reasons why viewing the fault element of inducement in mental state terms is wrong.  Among them are the following:

  • The “people” who are accused of inducement are not people at all.  They are corporations.  To speak of a corporation as having a specific state of mind is borderline meaningless.  Is it sufficient that an engineer’s purpose is to infringe a patent?  Or does one look to the legal department?  Or must senior management “intend” to infringe a patent?   These questions are particularly problematic in the patent infringement context, which involves assessments not just of factual consequences, but also of legal questions.
  • No one ever has the “purpose” of infringing a patent.  Of course, one may purposefully engage in acts that constitute infringement.  One may even purposefully copy another’s technology.  But no one’s purpose is to infringe a patent.
  • Nor does the alternate mens rea concept of “knowledge” work.  Knowledge is typically established when one is “substantially certain” of certain consequences.  Given the uncertainties associated with patent law, one can virtually never be “substantially certain” that conduct infringes a patent short of a final judgment.
  • Indeed, the facts of past opinions involving inducement suggest that, notwithstanding the court’s framing of the legal issue, what is really required is the existence of an obvious, high risk that the relevant conduct infringes a particular patent – not actual knowledge that it infringes a patent or purpose to infringe a patent.  Thus, although the fault element of inducement is commonly articulated as requiring “intent to infringe a patent,” I suggest that the normative standard that is actually being applied is one of recklessness. 

Rather than continue to attempt to articulate the fault element of inducement as if it required a subjective mental state, I suggest that an objective inquiry akin to civil recklessness is more appropriate.  Specifically, I argue that the better approach would be to ask whether, given the information known to the accused party at the relevant time, a high risk that the relevant conduct infringed a patent would be obvious to a person in the accused party’s place.   Obviously, my articulation is by no means perfect (and I’m dealing with some of the imperfections in my paper), but I think it provides a more intelligible articulation of the fault element for inducement than currently exists.

1 By "fault element," I simply mean the component that transforms a doctrine into something other than a strict liability claim.

51 thoughts on “Inducement of Infringement: Should We Even Think of its Fault Element in Mens Rea Terms?

  1. Just checked, and it appears that the lack of a justiciable controversy was raised in the reply brief. There it was argued that since the award of damages was sustainable under either theory of liability, the outcome of the case would not depend upon a reversal of one theory of liability. Apparently, and I have not researched this, the Supreme Court views the lack of a justiciable controversy as a jurisdictional issue.

    Which brings me to a point raised in the petitioner’s brief and in the Federal Circuit opinion itself. There it was said that to sustain the jury verdict of damages, the federal circuit thought that it had to sustain both theories of liability. What this implies is that the damages would be different if they were assessed under one theory and not under the other theory.

    So we have a controversy within a controversy. If the damages could be awarded under either theory, then there is no justiciable controversy. If the damages are different depending on the legal theory, the outcome of the appeal matters.

    But this brings me back to my original question, does it not? How is it that the damages for direct liability and damages for inducement liability are different under the circumstances of this case where the inducement is as a result of selling the infringing product to the defendant?

  2. Ned,

    You’ll pardon me if I give zero credence as to why you think the Supreme Court will do or say anything.

    Maybe if you were on point in the real world once in awhile I might care what you think, but your IMHO-Ned Law world don’t matta all that much to me.

  3. EG, I hardly think the Supreme Court would take a case if the outcome of the case did not depend upon its decision.

    Somehow I think the Supremes will say that the defendant’s liability depends upon liability for inducing infringement which implies that there is no direct infringement in this case. This would imply that sales abroad do not count as US sales. Obviously, this flies in the face of several recent Federal Circuit opinions.

  4. “It is not settled whether agents can sign infringement opinions,”

    the joke or the punchline is missing here.

    “but an opinion by an agent doesn’t shield you from a finding of willful infringement.”

    oh, there it is.

  5. The only person (s) that could have allowed you to put Your name (before you scurried after my telling you about the drawing on the face) as the Contact would have to be an Assignee. It couldn’t have been me. I am still tied up in knots.

  6. “Something is going on here I just do not get.”

    Ned,

    That’s very possible given the complexity of the factual situaion here. I went back to the case to review the fact situation again and it’s as I suspected. Pentalpha who was accused of inducing infringement is a foreign corporation that sold the infringing fryer to various other corporations (Sunbeam, Fingerhut and Montgomery Ward) outside the U.S. for retail sale within the U.S. Accordingly, I wouldn’t shed to many “crocodile tears” on these retailers being sued for direct infringement as they could (and may have) protected themselves with indemnification clauses.

    Also in reviewing the factual situation again, Pentalpha was nailed not only for inducing infringement but also for direct infringement in the sale of the fryers to these other corporations. The asserted problem with the jury verdict was that it wasn’t clear which basis for infringement (direct or inducing) the damages award was based on. In the Federal Circuit’s view it didn’t matter as Pentalpha would be liable for entire amount of damages whether it was based solely on direct infringement or solely on inducing infringement.

    What’s ironic here is that while Pentalpha may win with SCOTUS on the inducing infringement issue, Pentalpha may yet end up losing by remaining liable for all of the damages under a direct infringement theory. We’ll just have to wait and see.

  7. Morning LOL’s

    Ned – “Something is going on here I just do not get.

    Malcolm – “I’m guessing, by the way.

    In other news, water is still wet.

  8. Something is going on here I just do not get.

    Perhaps it’s because both composition and method of use claims were asserted and the patentee wanted to cover all its bases.

    I’m guessing, by the way.

  9. Smash mouth, you are of course right. However, I am still struggling with the whole point of why the patent owner was attempting to prove active inducement. It seems to me that if he is awarded damages for the sale by the manufacturer of the cookers, he cannot thereafter sue the manufacturer’s customers for either their use or resale. Their use and resale would not be infringing under exhaustion theory.

    I do not see how this essential fact changes even if the manufacturer is liable for the use and resale by his customers under the active inducement theory. In fact, I would think that the exhaustion theory would trump active inducement.

    On the contrary, I think the patent owner is entitled to recover from the manufacturer all the damages caused by subsequent use and sale by anybody who takes from the manufacturer. So I do still do not understand why it was necessary to proceed under an active inducement theory.

    Something is going on here I just do not get.

  10. Ned-
    “And, if “lost profits” is the measure of damages, it is the profits made by the resellers or the profits made by the manufacturer?”

    As far as I’m aware, lost profits damages have been read out of the statute (35 U.S.C. 284) since 1964, when the Supremes gave us their holding in the Aro case, which intepreted the 1952 Act as eliminating lost profits damages.

  11. and the use or resale by the customers is also a direct infringement? If not, why not?

    Exhaustion?

  12. Malcolm, but read the case. The measure of damages was based primarily if not solely on the infringing sales of the customers.

    Now the question is this: Assuming NO 271(b) liability, wouldn’t the maker and seller be responsible to the patent owner for the damages caused the patent owner by the maker’s customers when, as here, the sale of the device to the customers is an direct infringement, and the use or resale by the customers is also a direct infringement? If not, why not? Why is it necessary to demonstrate active inducement?

    Look at it this way. If the cookers were sold for $100 to the ultimate consumer, but sold to the resellers at $10, and a reasonable royalty is 5% of sales price, what are the damages? 5% of $100 or 5% of $10.

    And, if “lost profits” is the measure of damages, it is the profits made by the resellers or the profits made by the manufacturer?

    There seems to be no other good reason why the patent owner proceeded with an inducement theory except to obtain a complete recovery.


  13. Posted by: Ned Heller | Oct 13, 2010 at 04:21 PM

    Not sure what you’re driving at Ned. The “legal theory” under which makers and sellers of infringing apparati are liable for damages is called “patent infringement.”

  14. OK, EG. I still think it incongrous for a seller of an infringing apparatus not to be responsible for the infringement of his customer.

    What say you?

  15. On the damages question, I found the following observation by Mooney in the Lucent v. Microsoft thread:

    “Say that 100 people in the U.S. actually do use the method when using Outlook. Should all 110 million copies of Outlook have the royalty assessed?”

    I think, legally, the answer has to be *helll no!* The reason is that in order for inducement or contributory infringement to apply, infringement of the claim must have actually occurred. Merely telling someone to practice a claimed method is not inducing infringement if, in fact, nobody actually practices the claimed method. Likewise, if I promise that anyone who buys my device will be able to practice the method claimed in patent X, it’s not induced infringement if I sell a billion copies and the device isn’t actually capable of doing what is claimed.

    Posted by: Malcolm Mooney | Sep 14, 2009 at 07:11 PM “

    I assume that Mooney would now agree that if the majority of the damages were caused by the customers of the maker and seller of the infringing apparatus, that the first maker and seller should be responsible for the customer’s damage under some legal theory.

  16. “You can induce to the same effect without knowing the cause.”

    Anonymous,

    That may be true, but the words of 271(b) say “inducing infringement of the patent” and not “inducing infringement of the patented invention” (see 271(a) language). That suggests to me that you must have “knowledge” (explicit or constructive) of the patent which is being infringed, not simply inducing acts that cause infringement of that patent which you have no knowledge of. The “knowing” language in 271(c) does not suggest otherwise because that relates to “knowing the [component]” of the patented machine, manufacture, combination (or compostion, material, or appparatus for use in practicing a patented process) to be especially made or especially adapted for use in infringement of the patent. Knowledge of the patent is also required by 271(c), but the “knowing” language is included in 271(c) so that someone who “innocently” sells, offers for sale, or imports the “component” (without knowledge that the “component” is made/adapted for use in the patented item) won’t be deemed a contributory infringer

    “But then, is not there tension here between the Seagate standard for willful infringement and the mental state required for inducement?”

    Ned,

    Not in my view. In fact, Seagate addresses a very different issue unrelated to knowledge of the patent. Seagate overturned a much easier and lower standard for showing willfulness in Underwater Devices which created a potentially Draconian “duty of care” to determine whether known patent rights were infringed . Instead, Seagate made it harder to prove willful infringemetn by invoking the “reckless disregard” standard, even in the face of known patent rights.

    In fact, making extrapolations/interpretations of what is meant in each of the paragraphs of Section 271 based on what other paragraphs say can be an exercise in frustration and futility. For example, both 271(e) and 271(f) use the term “patented invention,” which has been interpreted differently. Compare Eli Lilly v. Medtronic (“patented invention” in 271(e) includes medical devices, in addition to patented drugs with the implication that all statutory classes in section 101 are included) vs. Cardiac Pacemakers v. St Jude Medical (“patented invention” in 271(f) does not include processes). SCOTUS may surprise us all and affirm the Federal Circuit in SEB, but I doubt it.

  17. One would ask why 271(b) was an issue at all in this case when the “induced” were only reselling cookers sold to them by the defendant, albeit, at a higher price. Doesn’t the law require the defendant to be responsible in damages for the use and sales of its customers?

    If not, and I suspect that that might be the REAL problem here, inducement become critically important for the patent owner to recover for all the damage caused by the infringer.

  18. @ Alun Palmer

    Since when is an agent signing an opinion letter not considered the unauthorized practice of law?

    Also, why would you write an opinion letter that concludes your client is “probably” infringing a patent? I do not see the point of such a letter.

    Agents such as yourself are why most jurisdications make it a crime to practice law without a license.

  19. Solvay v. Honeywell. Fed. Cir., precedential, today.

    In the linked case, the Federal Circuit reversed a District Court holding that the claims in an asserted patent were invalid on the basis of prior invention. It held that prior invention requires the reduction to practice in the United States by the original inventor.

    The defendant Honeywell had contracted with Russians to do research on a chemical process. They reported to Honeywell their success, and communicated in their report the details of how to carry out the chemical process. It was undisputed that the report described the patented invention.

    Honeywell then itself carried out the invention prior to the asserted patent’s priority date, and later went into commercial production and filed a patent application on improvements to the process.

    The Federal Circuit held that under the circumstances, Honeywell did not conceive of the invention, but merely carried out the instructions of the original inventor. Therefore, the invention, albeit reduced to practice in the United States prior to the priority date of the asserted patent, was not made in the United States by “another inventor” as required by the statute.

    link to cafc.uscourts.gov

  20. There are many cases where infringement is very clear. I had one just the other day.

    As an aside, I’m an agent, not an attorney, but I did the analysis for a lawyer. It is not settled whether agents can sign infringement opinions, but an opinion by an agent doesn’t shield you from a finding of willful infringement.

    Cases that get to court tend to be close cases, so the other ones don’t result in new precedent. This means we tend to discuss cases where the mens rea is unclear, because it was never clear to the infringer whether they were infringing, but it doesn’t mean that’s the norm.

    And of course, nobody writes a letter that says the client is definitely infringing, only probably.

  21. Jason In short, under my proposal, one can meet the fault elements required for actively inducing infringement by (a) intending to cause another to engage in acts, (b) despite a high risk that those acts infringed a patent that would be obvious to another in the accused party’s place.

    I think it would be more clear to say: “One can meet the fault elements required for actively inducing infringement by (a) intending to cause another to engage in acts where (b) another in the accused party’s place would recognize there is a high risk that those acts infringed.

    I agree with this position, by the way.

  22. The “people” who are accused of inducement are not people at all?

    You don’t have to search very hard to find cases in which officers are sued in their individual capacity for inducing infringement by their own corporation. I think it might be considered rude to sue the officers, but it happens.

    But no one’s purpose is to infringe a patent?

    That is plainly wrong. Intentional infringement happens all the time, and it is alleged even more often.

    With the first two factual predicates so obviously wrong, how strong can the rest of the article be?

  23. Again, thanks for the comments, especially the ones that disagree with me.

    In terms of whether 271(b) uses the “active” language, two points:

    (1) Since I’m using a conceptual approach, I’m not bound by (although not completely agnostic to) the statutory codification of the doctrine. In other words, while it’s good to work within the text, it’s not mandatory.

    (2) Even working within the text, I think there’s room for “active” inducement when applying a recklessness standard. Remember, there are two separate fault elements required for inducement: one with respect to the acts themselves and one with respect to whether those acts infringe. I’m significantly less troubled by applying an “intent” requirement to the former for a variety of reasons, including the fact that generally one intends the consequences of one’s own acts (i.e.: if a company provides instructions explaining how to use a product in a given manner, it’s plausible to suggest that the company intended the product to be used in that manner). I realize there’s still the corporate state of mind issue, but when we’re dealing with questions of intent to cause particular factual consequences it’s a much simpler (and more realistic) problem to deal with.

    In short, under my proposal, one can meet the fault elements required for actively inducing infringement by (a) intending to cause another to engage in acts, (b) despite a high risk that those acts infringed a patent that would be obvious to another in the accused party’s place.

  24. EG, I hear you. The Supreme Court might find, even under the circumstances of this case, that the infringer did not have the requisite knowledge of the patent to “actively induce” infringement. But then, is not there tension here between the Seagate standard for willful infringement and the mental state required for inducement? How can a willful infringer who willfully infringes by selling a product to a customer not also be guilty of actively inducing that customer to infringe?

    The evidence suggests that the infringer knew of the high likelihood that the product it copied was patented. The Federal Circuit said it would have authorized a new trial on the issue of willfulness had it been asked. (The only reason that the lower court had not entered a judgment of willfulness was because Seagate had come down after trial but before judgment was entered. The lower court held that the evidence submitted to the jury would justify a verdict of willfulness, but only under the preponderance of evidence standard.)

    What this suggests to me is that the legal standard for willful infringement and for active inducement must be the same.

  25. Congress can set a federal law. Stating that whomever makes a decision that would affect any chance of legal action in copyright, infringement, or trademark, should be held accountable with initaling the action taken. easy as Pie. Cherry Pie for me thankyou, with a dollup of vanilla ice cream and topped again with whipped cream.

  26. there has to be some sort ‘knowledge’ that the acts which are being ‘actively induced’ are ‘infringing a patent.’

    Why?

    You can induce to the same effect without knowing the cause. “Activity” does not require “volition.” Just look at the large number of active posters here that do not seem to know what they are talking about. One has only to compare 271(b) to 271(a), which is absent any sense of “knowing,” and contrast with 271(c), which actually uses that term.

  27. The ‘people’ who are accused of inducement are not people at all. They are corporations. To speak of a corporation as having a specific state of mind is borderline meaningless.”

    Not exactly accurate. Corporations act through “people” and the acts (including the “intent”) of those “people” can be attributed to the corporation if those “people” act within the scope of their corporate authority.

    Given the way 271(b) is phrased (relative to 271(a) which says only that “mak[ing], us[ing], offer[ing] to sell, or sell[ing] any patented invention” without authority to do so is infringement, even without knowing the invention is patented), there has to be some sort “knowledge” that the acts which are being “actively induced” are “infringing a patent.” Clearly, explicit knowledge of the patent itself meets that criteria. But while 271(b) doesn’t specifically say you must know of the patent being infringed (i.e., explicit knowledge), it’s hard to evision that you can induce “infringement of a patent” without knowing of the patent or being put on clear, constructive knowledge of its existence (for example, knowledge of the published U.S. patent application or possibly foreign equivalents of the patent).

    By contrast, what occurred SEB was copying of the patentee’s product and then not informing whoever was carrying out the freedom to practice search/opinion whose product was being copied. Even if this evidence might possibly suggest suspicion that the product copied might be patented, that may not be enough to constitute even “constructive knowledge” of the patent to satisfy the requirements of 271(b). That SCOTUS granted cert in SEB (given their recent track record in patent cases) suggests that SCOTUS will require at least “constructive knowledge” (and more than mere suspicion) of the existence of the patent and may be even “explicit knowlege” of its existence.

  28. @ Paul F. Morgan

    My post (“out of touch with reality”) was inspired by the author’s first three bullet points, not the author’s conclusion. In my experience, (1) corporations can and do have a state of mind, (2) corporations do knowingly infringe patents and (3) many questions of infringement are easily answered in the affirmative.

    That said, I also disagree with the author’s conclusion. To prognosticate as requested, an objective recklessness standard ignores the plain language of the statute. The statute requires “active inducement,” which (to my logical mind) clearly requires a subjective analysis. If an objective standard is more appropriate, then Congress should be asked to amend the statute.

  29. Ron, the only valid “reality test” is whether any of our views on what we think are important are consistent with whatever a majority of Supreme Court Justices ultimately decide in this case. [Assuming the Court does not engage in an uninstuctive “waffle” as in Bilski, or decides the case on some other grounds. But even in Bilski, the actual Bilski claims on appeal did not get a single favorable vote from any Justice.]
    Care to risk your own prognostications to a reality test on this one?

  30. Not exactly. It’s closer to the truth to say that they are levied against patents.

    You were a lot more interesting back before you decided that you needed to argue about everything. C’mon, IANAE, it’s time to let one go.

  31. As to the reply of It’s closer to the truth to say that they are levied against patents“,

    such a statement is more convincing than anything you can say to announce that you don’t know what you are talking about. It’s a safe bet that you have never been involved in with a charge of inequitable conduct.

  32. Paul, the issue of marking or not is not so clear. If a company routinely marks its patented products with its patent numbers, and/or marks “patent pending” as appropriate, then it might be safe to copy a product that is unmarked. Similarly, if a company routinely marks its products with patents as they issue, but does not mark products with “patent pending,” the mere fact that patent pending was not on a product does not indicate that a patent application was not pending. Finally, if a company routinely patents its products but does not mark its products for one reason or another, one should assume that every one of its products product is covered by one or more pending patent applications without more.

    In the present case, the evidence suggested that the patent owner routinely marked its products with its patents – but there was no testimony that it marked its products with “patent pending.” There is further evidence of direct copying. Finally and most damning, the infringer requested a right-to-use opinion of patent counsel, but did not tell patent counsel of the deliberate copying of the patent owner’s product.

    Under the circumstances of this case, I think it is manifestly clear that the infringer was aware that the product it copied was more than likely the subject of a patent application, and was not only willfully infringing, but was inducing infringement by selling its product to resellers.

  33. anonymous: Inequitable conduct charges are not levied against a corporation. They are only levied against individuals.

    Not exactly. It’s closer to the truth to say that they are levied against patents. When the real party in interest during prosecution is a company, they look at the mental states of everyone in the company and their agents. Sure, they’re all individually individuals, but if any of them had knowledge of the prior art and the requisite intent, it’s not a big leap to say that the company has done something wrong and should lose its patent. That seems to be a pretty decent model for corporate intent to induce infringement as well.

    Jason: For example, copying a product that’s marked with a patent number is a highly risky thing to do when it comes to patent infringement – but not so high as to create a substantial certainty of infringement.

    Copying a marked product is the closest you can ever get to certainty of infringement without asking a judge. The patentee himself states by his marking that the patent covers that very product, and it’s somewhat likely the patent was even drafted with that product as the preferred embodiment. If that’s not specific intent, specific intent doesn’t exist.

  34. The real question before the Sup. Ct. in this case is simply whether or not “inducing infringement” requires actual prior knowlege of the infringed patent or not, where the product was not marked with any patent number, or otherwise “noticed.”
    That is an issue that almost everyone but this CAFC panel thought had been settled as “yes” by the en banc decision in DSU Medical v. JMS (Fed. Cir. 2006).
    If the answer is sustained as “no”, anyone buying a product from someone who copies a product of another would have to pay for for an infringement search, or risk suit for induced infringements occuring before being put on any actual notice or being sued. [Such an imposed duty search is far more costly and unsure than the patent owner simply printing the actual correct patent numbers on the product in compliance with the marking statute.] Futhermore, most products, especially simple ones, as here, are not patented, can be freely copied, and should be copied, since the public benefits from the product and price competition. So how likely is it that the Sup. Ct. will sustain this CAFC panel decision?

  35. Thanks for the comments. A few brief responses:

    1) On inequitable conduct: as an anonymous poster pointed out, although inequitable conduct claims are often made in the context of BigCorp v BigCorp litigation, the actual claims involve conduct by individuals. I don’t think it’s unrealistic for the law to ask whether a person engaged in conduct with the purpose of deceiving the patent examiner. On the other hand, outside of a few extreme situations that inducement is not really directed at (such as the intentional provocation mentioned by 6 above, where it is unlikely that there is little, if any, actual exposure), it’s hard to picture the person who engages in conduct with the “purpose” of infringing a patent.

    2) While there other standards involving “intentional” corporate conduct, that doesn’t mean that it’s a good approach. Certainly there’s an argument to be made in favor of the notion that there’s a clear corporate “state of mind.” I’m just not persuaded by it, and also think that the problem of this concept is exacerbated in the patent infringement context, which is characterized by assessments of legal – as opposed to factual – consequences, assessments that many people in the corporation may not equipped to make.

    3) On the difference between “substantially certain” and “so likely to be reckless,” I think there’s actually a substantial difference between the two articulations, given that one embodies the concept of virtually certain, while the other simply envisions a high risk. For example, copying a product that’s marked with a patent number is a highly risky thing to do when it comes to patent infringement – but not so high as to create a substantial certainty of infringement.

    Also, keep in mind that “knowing” is a subjective standard, while civil recklessness is an objective standard.

  36. We also discuss intent in matters of inequitable conduct, and we don’t even dream of doing away with that intent requirement.

    Inequitable conduct charges are not levied against a corporation. They are only levied against individuals.

  37. Few questions:

    1. To what extent is this true of every other “intent” requirement that is applied to corporate parties. Not limited to patent law, they are numerous indeed. And even within patent law, there is the big elephant of inequitable conduct where often the real party in interest is also a corporation.

    2. Your points 3 and 4, it seems to me, is only to make a small difference. The difference between “substantially certain” and “so likely as to be reckless” is not a huge one.

  38. Another reason that this author must not write infringement opinions is that adopting this standard would completely eliminate any need for opinion letters at all. Considering the use of opinion letters as a pro forma “get out of jail free” card in willfulness for years, I think it would be a good idea to adopt the same standard for willfulness and inducement and take the “mental state” out of inducement as well [since, whether or not a corporation has a mental state (I would argue that it can), it is almost impossible to prove.

    As long as inducement has some requirement that the inducer is aware of the patent and the risk, I am OK with having this kind of a standard.

  39. I take it, the author doesn’t engage in writing infringement opinions.

    You write infringement opinions in which you aver that it is “substantially certain” that given conduct infringes a patent?

    What is the purpose of these opinions, if I might ask?

  40. Imagine, a company intentionally copies the products of its competitors, knowing they are probably subect to patents and patent applications, but does not check. That company is a willfil infringer.

    That company then sells the products to third parties who use the products or perform the patented methods of the competitor products. How could we with a straight face not similarly hold the company liable under either or both 271(b) or 271(c)?

    Whenever a company is a willful infringer if it practiced the patented invention itself or by making and selling, it should also be liable under 271(b) and (c).

  41. Sounds a lot like the Seagate standard for wilfull infringement.

    I like it.

    Hopefully, the good folks at the Supreme Court might comment on Seagate in the process of construing 271(b).

  42. To speak of a corporation as having a specific state of mind is borderline meaningless.

    I think there’s room for a little bit of anthropomorphism here. If a company can “speak” by spending money, surely there’s some way it can intend to perform an infringing act.

    We also discuss intent in matters of inequitable conduct, and we don’t even dream of doing away with that intent requirement.

    Also, we speak of the intent of Congress all the time when we construe statutes. If ever there was a body of decision-makers who couldn’t form a common intent, it’s them.

    I would apply a similar rule to inequitable conduct, and say that a company intends to induce infringement when someone materially involved with the decision to induce the conduct has the requisite knowledge of the patent.

  43. ” To speak of a corporation as having a specific state of mind is borderline meaningless. ”

    Tell it to the USSC that saddled us with this absurd legal fiction decades, or a century or so ago.

    “But no one’s purpose is to infringe a patent. ”

    I beg to differ. I may very well purposefully infringe a patent shortly to nix b claims. Can’t go to court without infringing.

    “Given the uncertainties associated with patent law, one can virtually never be “substantially certain” that conduct infringes a patent short of a final judgment.”

    Riiiiiiiight.

    Gl with ur paper dood.

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