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.