Chapter §14.04 Temporal Aspects of §271

• Jurisdiction: United States

§14.04 Temporal Aspects of §271

[A] Pre-Issuance Acts

A patent is a creature of statute. Unless and until the government issues a patent, granting its owner the right to exclude others from practicing the patented invention, there can be no infringement liability. In short, there is no actionable patent infringement before a patent issues.²⁰⁵

The Federal Circuit's 1996 decision in Nat'l Presto Indus., Inc. v. W. Bend Co.²⁰⁶ is illustrative. Presto's U.S. Patent No. 5,089,286 ('286 patent) concerned a device that cut vegetables into spiral curls (for example, generating "curly fries"). A jury found that West Bend's vegetable cutter device infringed the '286 patent under the doctrine of equivalents and the Federal Circuit affirmed.

On cross-appeal, patentee Presto argued that West Bend, with knowledge of Presto's commercial device and Presto's patent activities, "acted to flood the market with West Bend's 'imitation' [product] during the months before the Presto patent issued."²⁰⁷ Presto argued that by these pre-issuance actions, West Bend actively induced infringement of the Presto patent after patent issuance, in violation of 35 U.S.C. §271(b). Presto sought to increase its damages recovery from West Bend to include recompense for infringing retail sales and use, after patent issuance, of the devices that West Bend had placed into commerce during a reasonable period before Presto's patent issued.

The Federal Circuit in Nat'l Presto agreed with the district court that as a matter of law, there could not be liability for pre-issuance activity leading to post-issuance infringement. In the case at bar, no remedy was available for inducement under §271(b) against West Bend, even though (Presto alleged) West Bend had deliberately placed later-infringing items into the chain of commerce before Presto's patent issued. To be liable for the tort of inducing infringement, there must first be infringement to induce, and infringement cannot occur until a patent issues:

Although the tort of inducement is itself prospective, in that the direct infringement will not have occurred until after the acts of inducement, when no patent has issued at the time of the inducement there can not be a violation of §271(b). The principle of liability for "aiding and abetting" the wrongful acts of others is not imposed retrospectively, to make illegal an act that was not illegal when it was done. That is, if the thing that was abetted was not illegal at the time of abetment, but depended on some future event that might not occur (such as issuance of the patent) liability can not be retroactively imposed. As discussed in Camp v. Dema, 948 F.2d 455 (8th Cir.1991) with respect to violation of the securities laws, "aiding and abetting not only

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