{"id":1346,"date":"2016-12-12T12:19:34","date_gmt":"2016-12-12T17:19:34","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1346"},"modified":"2016-12-14T08:53:06","modified_gmt":"2016-12-14T13:53:06","slug":"a-finding-of-induced-infringement-requires-actual-inducement","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1346","title":{"rendered":"“A Finding of Induced Infringement Requires Actual Inducement”"},"content":{"rendered":"

In\u00a0Power Integrations, Inc., v. Fairchild Semiconductor International, Inc.<\/em>, <\/strong>[2015-1329, 2015-1388] (December 12, 2016), a complicated action where each party claimed the other directly and indirectly infringed its patents, \u00a0the Federal Circuit affirmed<\/strong><\/em> the jury\u2019s verdict that the asserted claims of the \u2019876 patent were not anticipated; vacated<\/strong><\/em> the jury\u2019s verdict that Fairchild induced infringement of the\u00a0asserted claims of the \u2019876 and \u2019851 patents; reversed<\/strong><\/em> the jury\u2019s verdict that the asserted claims of the\u00a0\u2019605 patent were not anticipated; and affirmed<\/strong><\/em> the district court\u2019s construction of the \u2019972 patent.<\/p>\n

On this issue of induced infringement, the Federal Circuit noted \u00a0that induced infringement is defined in 35 U.S.C. \u00a7 271(b):\u00a0\u201cWhoever actively induces infringement of a patent shall be liable as an infringer.\u201d\u00a0 Fairchild\u2019s proposed jury instruction tracked\u00a0the then-current Federal Circuit Bar Association model, while Power Integrations\u2019 proposal was a variation of an\u00a0instruction given in a prior trial in the District of Delaware.\u00a0 The district court adopted an instruction that largely\u00a0tracked the one proposed by Power Integrations:<\/p>\n

Each party alleges that the other is liable for infringement by actively inducing others to directly infringe the patents in suit. The direct infringement\u00a0may either be literal or under the doctrine of equivalents. A party induces patent infringement if it purposefully causes, urges, or encourages another\u00a0to use a product in a manner that infringes an asserted claim. Inducing infringement cannot occur unintentionally.<\/p>\n

A party is liable for active inducement only if the patent owner proves by a preponderance of the evidence that:<\/p>\n

    \n
  1. the party took some action during the time the patents in suit were in force intending to encourage or assist actions by others;<\/li>\n
  2. the party was aware of the patent and knew that the acts, if taken, would constitute infringement of that patent or the party believed there was a high probability that the acts, if taken, would constitute infringement of the patent but deliberately avoided confirming that belief; and<\/li>\n
  3. use by others of the party\u2019s product infringes one or more of the asserted claims of the patent.<\/li>\n<\/ol>\n

    In order to establish active inducement of infringement,\u00a0it is not sufficient that others directly\u00a0infringe the claim. Nor is it sufficient that the\u00a0party accused of infringement was aware of the\u00a0acts by others that directly infringe. Rather, in\u00a0order to find inducement, you must find that the\u00a0party accused of infringement intended others to\u00a0use its products in at least some ways that would\u00a0infringe the asserted claims of the patent. However,\u00a0that infringement need not have been actually\u00a0caused by the party\u2019s actions. All that is required\u00a0is that the party took steps to encourage or assist\u00a0that infringement, regardless of whether that encouragement\u00a0succeeded, or was even received.<\/strong><\/p>\n

    Intent to encourage or assist the acts that constitute\u00a0direct infringement must be proven by evidence\u00a0of active steps taken to encourage direct\u00a0infringement, such as providing products, advertising\u00a0any infringing use, or instructing how to\u00a0engage in any use that is infringing. Proof of intent to induce infringement may be\u00a0based on circumstantial evidence, rather than direct\u00a0evidence.<\/p><\/blockquote>\n

    The Federal Circuit said that this instruction left the jury with the incorrect understanding\u00a0that a party may be liable for induced infringement even where it does not successfully communicate\u00a0with and induce a third-party direct infringer. The Federal Circuit said that the Supreme Court in Global-Tech Appliances<\/em> explained that the term \u201cinduce\u201d as it\u00a0is used in \u00a7 271(b) \u201cmeans \u2018[t]o lean on; to influence; to prevail on; to move by persuasion.\u201d Each definition requires successful communication between the alleged\u00a0inducer and the third-party direct infringer.<\/p>\n

    The Federal Circuit noted that in Dynacore Holdings<\/em> it held that \u201c[t]o prevail under a theory of indirect infringement, [plaintiff] must first prove that\u00a0the defendants\u2019 actions led to direct infringement of the\u00a0[patent-in-suit].\u201d And that in DSU Med. Corp.<\/em> it held that the plaintiff has the burden of showing that the alleged\u00a0infringer\u2019s actions induced infringing acts,\u00a0 The Federal Circuit concluded that under this precedent, a finding of induced infringement\u00a0requires actual inducement, although this inducement may be proven via circumstantial evidence.<\/p>\n

    In other words, liability for inducement requires proof that (1) a third\u00a0party directly infringed the asserted claims of the patent; (2) the defendant induced those infringing\u00a0acts; and (3) defendant\u00a0knew the acts it induced constituted\u00a0infringement.<\/p>\n","protected":false},"excerpt":{"rendered":"

    In\u00a0Power Integrations, Inc., v. Fairchild Semiconductor International, Inc., [2015-1329, 2015-1388] (December 12, 2016), a complicated action where each party claimed the other directly and indirectly infringed its patents, \u00a0the Federal Circuit affirmed the jury\u2019s verdict that the asserted claims of … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[27,1],"tags":[],"class_list":["post-1346","post","type-post","status-publish","format-standard","hentry","category-inducement","category-uncategorized"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1346","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1346"}],"version-history":[{"count":2,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1346\/revisions"}],"predecessor-version":[{"id":1348,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1346\/revisions\/1348"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1346"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1346"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1346"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}