Chapter §17.01 Introduction

• Jurisdiction: United States

§17.01 Introduction

Section 271 of the Patent Act (35 U.S.C.) distinguishes between acts of direct infringement and acts of indirect infringement. Many patent infringement lawsuits center on allegations that an accused infringer directly infringed under 35 U.S.C. §271(a) by making, using, or selling the entire claimed invention without authority, as detailed supra.¹ Subsection 271(a) governs direct infringement—the unauthorized making, using, selling, offering to sell, or importing² of the entire claimed invention. By application of the all-limitations rule, derived from case law as discussed supra, the act of "mak[ing]" the claimed invention under 35 U.S.C. §271(a) requires that an accused infringer has manufactured a device that meets each and every limitation of the asserted claim. Generally speaking, this means that if the claimed invention is a combination of elements, the accused device must be fully assembled and ready for use.³

These are by no means the only acts that constitute patent infringement, however. One who actively induces another to commit direct infringement, or who supplies an essential component or starting material for the direct infringement, may also be liable as a patent infringer. Consider, for example, the supplier of a software program, which, when loaded and run on a digital computer by an end-purchaser, performs every step of a patented method or process. Depending on the language of the patent claim, the end-purchaser may be liable as a direct infringer while the software supplier may be liable as an indirect infringer. Such acts of inducement or contribution to another's direct infringement constitute indirect infringement.

Indirect infringement concerns activity involving less than a making of the entire invention, such as assisting one who does, or supplying certain required components of the invention. Nevertheless, such indirect activity is considered infringing because it assists or supports another entity's direct infringement. The direct infringer and the indirect infringer are considered jointly and severally liable for the infringement under a theory of joint tortfeasance.⁴

Another key distinction between indirect and direct infringement is that indirect infringement liability requires proof of intent, or scienter, while "a direct infringer's knowledge or intent is irrelevant."⁵ Case law illuminates the meaning of intent in the indirect infringement context; e.g., must the indirect infringer merely intend to...