Legislative Intent Supports a Patent Knowledge Requirement
| Publication year | 2011 |
| Pages | 61 |
| Citation | Vol. 40 No. 11 Pg. 61 |
2011, November, Pg. 61. Legislative Intent Supports a Patent Knowledge Requirement
November 2011
Vol. 40, No. 11 [Page 61]
Intellectual Property Law
Intellectual Property Law articles are sponsored by the CBA Intellectual Property Section. They provide information of interest to intellectual property attorneys who advise clients on protecting and exploiting various forms of intellectual property in the marketplace.
Coordinating Editors
K Kalan, Denver, of Berenbaum and?Weinshienk PC-(303) 592-8301, kkalan@bw-legal.com; William F. Vobach, Littleton, of Swanson and Bratschun, L.L.C.-(303) 268-0066, bvobach@sbiplaw.com
About the Author
Donna P. Gonzales is a student at the University of Denver Sturm College of Law, and is currently visiting The George Washington University Law School. She also is a law clerk at the Office of the Chief Counsel for Import Administration, Department of Commerce-(312) 208-7852, dgonzales-lin12@law.du.edu.
This article presents evidence, based on legislative intent, that supports the U.S. Supreme Court's decisions in Aro II and Global-Tech that some knowledge of the patent is required to find liability under contributory infringement and active inducement.
On May 31, 2011, the U.S. Supreme Court issued its decision in Global-Tech Appliances, Inc. v. SEB S.A.,(fn1) holding that induced infringement under 35 U.S.C. § 271(b) requires knowledge that the induced acts constitute patent infringement.(fn2) Specifically, the Court held that induced infringement requires at least a showing that the defendant acted with "willful blindness."(fn3) The willful blindness standard requires that the defendant (1) subjectively believed that there is a high probability a fact exists and (2) took deliberate actions to avoid learning that fact.(fn4)
The Court based its decision primarily on the relationship of § 271(b) and (c), and its decision in Aro Mfg. Co. v. Convertible Top Replacement Co. (Aro II).(fn5)Recognizing the ambiguity of the statutory language, the Court looked to case law before the enactment of 35 U.S.C. § 271, which the Court found provided conflicting signals with regard to knowledge.(fn6) Implying that it had no other guidance, the Court turned to its decision in Aro II, which held that an alleged infringer under § 271(c) must know that the combination for which his or her component was especially designed was both patented and infringing.(fn7) The Court explained that because induced infringement under § 271(b) and contributory infringement under § 271(c) have a common origin in pre-1952 case law, it follows that both provisions should require the same knowledge of a patent.(fn8)
This article provides an overview of the additional guidance available to the Court in the legislative history to support its conclusions in both Aro II and Global-Tech that an alleged infringer must have knowledge of a patent before finding liability under § 271(b) or (c). The drafters of the bill, which eventually became 35 U.S.C. § 271, may have intended merely to codify case law that existed before Mercoid Corp. v. Mid-Continent Investment Co.(fn9)and Mercoid Corp. v. Minneapolis-Honeywell Regulator Co.,(fn10)but Congress did not share this intent. Congress instead focused on the original bill's adverse impact on commerce, and revised the original language to limit liability to only those who had knowledge of the patent.
Goals of Congress and Original Drafters
Congress and the original proponents of the bill had different goals regarding induced infringement. The original proponents were members of the patent law and practice committee of the New York Patent Law Association (Original Drafters),(fn11) whose primary concern was the consequences of the Mercoid decisions.(fn12) There, the U.S. Supreme Court essentially declared it illegal to bring an action under the old doctrine of contributory infringement(fn13) based on the patent misuse doctrine.(fn14)
In response to these decisions, the Original Drafters proposed the bill to codify the old doctrine of contributory infringement before the Mercoid decisions and address the confusion regarding the misuse doctrine.(fn15) Congress, however, had an additional and overriding goal. It wanted to make certain that the bill would not overburden commerce. This goal was articulated by subcommittee member Angier L. Goodwin:
The difference between the goals of the Original Drafters and Congress led to revisions to the original proposed language, which required knowledge of a patentI want to see legislation go just as little as possible into the field of regulation of business, or putting upon business industry, the necessity of being on notice with every move they make as to possible infringement of somebody else's rights.(fn16)
The Original Drafters' Goals
The Original Drafters had three goals in proposing the bill. First, they wanted to state in positive law the existence of the old contributory infringement doctrine before the Mercoid decisions.(fn17) Second, they wanted to distinguish infringing acts involving especially made items from acts involving staple articles and commodities with substantial noninfringing commercial uses (staples).(fn18) Third, they wanted to codify a provision to allow a patentee to assert a claim under contributory infringement and not subject himself or herself to a patent misuse defense.(fn19) Because the issue of misuse is not relevant to either § 271(b) or (c),(fn20) the following discussion addresses only the first two goals.
First goal. The Original Drafters intended to propose a bill that would codify case law before the Mercoid cases (as well as other cases decided under the misuse doctrine), in which the Supreme Court cast doubt as to the existence of the old doctrine of contributory infringement.(fn21) The doctrine was first recognized in Wallace v. Holmes,(fn22) and embodied the now separate concepts of active inducement and contributory infringement.(fn23) The doctrine was well established from the time it was recognized in 1871 until 1931, when the Court limited its scope in Carbice Corp. v. American Patents Dev. Corp.(fn24) The Court held that control over the supply of unpatented devices in an invention is beyond the scope of the patentee's monopoly.(fn25) Thirteen years later, the Court essentially eviscerated the doctrine in the 1944 Mercoid decisions.
In Mercoid Corp. v. Mid-Continent Investment Co., Mid-Continent filed a contributory infringement action against Mercoid for infringing its combination patent.(fn26) In response, Mercoid asserted that Mid-Continent should be barred from relief because it was seeking to extend its patent over unpatented devices.(fn27) In a separate action, Mercoid sued Mid-Continent's exclusive licensee, Minneapolis-Honeywell Regulator Co. (Honeywell), seeking a declaratory judgment that, inter alia, Honeywell used the patent-at-issue in violation of antitrust laws.(fn28)
In these companion cases, the Court cited Carbice and held that an owner of a combination patent may not use it to secure a limited monopoly over an unpatented device of the invention, even if the device is an integral part of the structure embodying the patent.(fn29) The Court further held that where there are issues regarding patent misuse and contributory infringement, the rules governing misuse control.(fn30) This decision was the impetus for the Original Drafters' proposition for the bill.
Second goal. The Original Drafters' second goal was to distinguish infringing acts involving especially made items from acts involving staples. Ever since the old doctrine of contributory infringement was recognized in Wallace v. Holmes,(fn31) the Supreme Court has distinguished between infringing acts involving staples from acts involving infringing items especially designed to be combined in a patented product.(fn32) Specifically, when the device at issue was especially designed and intended to be combined with the infringing product, the Court impliedly presumed that the defendant intended to infringe the patent, and held him or her liable without requiring...
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