Last month, the Federal Circuit issued its latest opinion on induced infringement. Instead of clarifying a complicated area of patent law, the American Intellectual Property Law Association (AIPLA) and the Federal Circuit Bar Association argue that the opinion muddied the waters further. The groups have filed an amicus brief requesting that the court rehear the case en banc to issue guidance on induced infringement.
In the brief, the groups argue that the court has issued a number of opinions that include confusing and contradictory legal tests on the issues of induced infringement. They argue that in a 1990 Federal Circuit decision, Hewlett-Packard, the court “articulated a standard suggesting that one need only show a specific intent to cause the acts that infringed without an intent to encourage a legal wrong.” In another 1990 decision, Manville Sales, a different panel “announced a test requiring knowledge of the acts giving rise to infringement and of the infringement itself.”
In 2006, the Federal Circuit itself noted the confusion between the two cases and chose to follow the Manville Sales case. The groups argue that this has not helped because the decision in Manville Sales itself is not clear.
Manville’s formulation of the inducement test has, however, contributed to the uncertainty because it simultaneously refers to a heightened “specific intent” to encourage infringement and to another level of intent – “knew or should have known” – when referring to awareness of infringement[.]
The SEB case further illustrates the lack of clarity as to the state of mind required for induced infringement.
During the discussion of the culpable state of mind requirement for inducement, the panel appeared to acknowledge, at different points, authority supporting specific intent, negligence (“knew or should have known”), and recklessness constructs such as “deliberate indifference.”
The panel further suggested that constructive knowledge of the patent may be sufficient in some circumstances and gave mixed signals on the specific intent requirement set forth in Manville. The panel seemed to indicate that the specific intent required in these situations is not high.
Finally, the brief sets forth a number of questions that the groups indicate should be resolved by the full court.
• Is the required culpable state of mind an objective or subjective inquiry, or both?
• Is the required culpable state of mind regarding the wrongfulness of the acts negligence, recklessness, intent or something else?
• If the test is “knew or should have known,” and some kind of duty exists, what is the scope of that duty and when is it implicated?
• Is a reasonable belief that the patent is invalid or unenforceable a defense to induced infringement?
• What is the difference between the mental state required for willfulness and the mental state required for induced infringement?
• Is knowledge of the patent required, and, if not, what is the standard to prove “constructive knowledge”?
The groups do not at this time take a position on these questions, but recognize that this issue is ripe for review by the court. There is a need for clarity as to the type of behavior and state of mind that constitutes good commercially competitive activity and what constitutes induced infringement.