Matthew T. Nesbitt, from Oil Lamps to Cell Phones: What the Trilateral Offices Can Teach Us About Detaingling the Metaphysics of Contributory Infringement

• Jurisdiction: United States,Federal
• Publication year: 2007
• Citation: Vol. 21 No. 2

FROM OIL LAMPS TO CELL PHONES: WHAT THE TRILATERAL OFFICES CAN TEACH US ABOUT DETANGLING THE METAPHYSICS OF CONTRIBUTORY INFRINGEMENT

INTRODUCTION .............................................................................................. 670

I. CONTRIBUTORY INFRINGEMENT IN THE UNITED STATES ................... 671

A. Early Development of Contributory Infringement ...................... 672

B. The Limitation of Contributory Infringement by the

Expansion of Patent Misuse ....................................................... 678

C. The Enactment of the Patent Act of 1952 ................................... 683

D. Discussion of 35 U.S.C. Sec. 271(c) ............................................... 685

1. Knowledge or Intent to Infringe ........................................... 686

2. Nature of the Infringing Article ............................................ 689

II. CONTRIBUTORY INFRINGEMENT IN SELECTED COUNTRIES ................ 691

A. Indirect Infringement in Japan ................................................... 692

1. Knowledge or Intent to Infringe ........................................... 693

2. Nature of the Infringing Article ............................................ 694

B. Indirect Infringement in the United Kingdom ............................ 695

1. Knowledge or Intent to Infringe ........................................... 696

2. Nature of the Infringing Article ............................................ 698

C. Indirect Infringement in Germany .............................................. 698

1. Knowledge or Intent to Infringe ........................................... 699

2. Nature of the Infringing Article ............................................ 700

III. A PROPOSAL TO MODIFY U.S. CONTRIBUTORY INFRINGEMENT

LAW .................................................................................................... 700

A. Encouraging Innovation ............................................................. 703

B. Global Harmonization ................................................................ 704

C. Consistency with the Intent of the Patent Act of 1952 ................ 705

D. Avoiding Inequitable Decisions .................................................. 706

One hundred years ago the Supreme Court defined patent law to be the most metaphysical branch of modern law, and I would say that contributory infringement is the most metaphysical branch in patent law.

-GILES S. RICH¹

INTRODUCTION

Contributory infringement "exists to protect patent rights from subversion by those who, without directly infringing the patent themselves, engage in acts designed to facilitate infringement by others."²The doctrine has evolved over a period of 130 years; it originated in the common law and was later codified by the Patent Act of 1952. During this evolution, there has been a great deal of confusion regarding the doctrine's proper scope. This Comment examines the development of the doctrine through time and analyzes the scope of the doctrine in light of the approach taken by other nations.

In the United States, a defendant is liable for contributory infringement when he or she sells an article with knowledge that it is adapted for use in a patented combination and the article is not capable of substantial non- infringing uses.³Naturally, it follows that a plaintiff cannot recover when he or she cannot prove that the defendant-manufacturer knew the article was adapted for use in the patented combination or when the article is capable of substantial non-infringing uses.⁴Consequently, a defendant-manufacturer can avoid liability even if he or she knows the accused device will be used in an infringing manner, provided he or she can show a non-infringing use for the article.⁵Similarly, a defendant can avoid liability if she can show she did not know of the plaintiff's patent-despite the fact that the accused article is only useful to infringe the patent.⁶This Comment, in examining the approach taken by the United States and other nations, suggests how domestic law can be improved to avoid certain inequitable results.

This Comment explains the differences and similarities among the doctrine of contributory infringement as it exists in the United States and its equivalent form in Japan, the United Kingdom, and Germany. These countries were chosen due to their importance as members of the so-called "trilateral" patent offices.⁷Part I of this paper explains both the development of contributory infringement in the United States and the current state of the law. Two questions have perplexed courts applying the doctrine: (1) what level of intent or knowledge is required by the law, and (2) what types of articles give rise to contributory infringement?⁸Due to this confusion, particular emphasis has been placed upon the level of intent a defendant must possess to be liable for contributory infringement and the types of articles manufactured by a defendant that will give rise to liability for contributory infringement. Part II addresses the current state of the law in Japan, the United Kingdom, and Germany, again focusing on the defendant's frame of mind and the types of articles that will give rise to liability. Finally, Part III revisits the American approach to contributory infringement and offers suggestions on how the law would be improved by adopting some of the practices of Japan, the United Kingdom, and Germany.

I. CONTRIBUTORY INFRINGEMENT IN THE UNITED STATES

An understanding of the origins and subsequent development of the doctrine of contributory infringement is essential to a thorough understanding of the subject today. Under traditional rules of patent law, a claim is not infringed unless each element of the claim is practiced.⁹The doctrine of contributory infringement is the exception to this rule and allows a plaintiff to recover when the accused product only reads on a portion of a claim.¹⁰The history of contributory infringement demonstrates the particular balance between giving a patent holder enough protection against clever defendants and giving the patent holder too much protection such that the monopoly exceeds what he disclosed to the public.¹¹

A. Early Development of Contributory Infringement

Early Supreme Court decisions refused to recognize patent infringement beyond the established doctrine of direct infringement.¹²Until the latter half of the nineteenth century, a defendant who did not practice every claimed element did not infringe the patent.¹³The law changed in 1871, when the Court in Wallace v. Holmes first recognized the doctrine of contributory infringement.¹⁴

In Wallace, the plaintiff's invention related to an improvement in oil lamps and consisted of two primary elements: a burner and a chimney.¹⁵The patent taught attaching the chimney to the burner to provide a shield that prevented the flame from being extinguished.¹⁶The defendants sold burners that were described in the patent, but did not sell chimneys.¹⁷The defendants argued that they did not infringe the plaintiff's patents on the grounds that they could not be held liable unless they had practiced all of the claimed elements.¹⁸

Judge Woodruff departed from the traditional rule that a patent is not infringed by a defendant who does not practice each element of the claimed device,¹⁹ and found the defendant liable for infringement.²⁰As Judge Woodruff commented on the situation:

It cannot be, that . . . two or more can engage in [the patented machine's] construction and sale, and protect themselves by showing, that . . . each makes and sells one part only, which is useless without the others, and still another person, in precise conformity with the purpose in view, puts them together for use . . . . In such case, all are tort-feasors, engaged in a common purpose to infringe the patent . . . . In a suit brought against such party or parties, a question might be raised, whether all the actors in the wrong should be made parties defendant; but I apprehend, that, even at law, and, certainly when non-joinder was not pleaded, the want of all the parties would be no defence. Each is liable for all the damages. Here, the actual concert with others is a certain inference from the nature of the case, and the distinct efforts of the defendants to bring the burner in question into use, which can only be done by adding the chimney. The defendants have not, perhaps, made an actual pre-arrangement with any particular person to supply the chimney to be added to the burner; but, every sale they make is a proposal to the purchaser to do this, and his purchase is a consent with the defendants that he will do it, or cause it to be done. The defendants are, therefore, active parties to the whole infringement, consenting and acting to that end, manufacturing and selling for that purpose.²¹

Judge Woodruff found that the burner was the "distinguishing feature of the invention"²²and concluded that the patent law should not condone the acts of the defendant under the principles of joint tortfeasors.²³Wallace, instead of relying on the traditional law of infringement,²⁴established the doctrine of contributory infringement by imposing liability on the theory that the defendant's joint activities collectively amounted to infringement.²⁵Wallace also stands for the principle that the intent to infringe a patent can be inferred when the article sold has no non-infringing uses.²⁶

While Wallace involved intent to infringe, courts soon made it clear that contributory infringement required more than mere intent to use the component in an infringing combination.²⁷In Millner v. Schofield, for example, a West Virginia District Court rejected plaintiff's claim that defendants infringed upon his patent for a tobacco curing apparatus.²⁸The defendants sold various stove components suitable for use with the plaintiff's device and they intended the components to be used as such; however, the components also had other uses aside from infringing the plaintiff's...