INVENTIVE STEP

Yesterday, the Supreme Court affirmed the Federal Circuit’s decision in Global-Tech, Inc. v. SEB, S.A.  The Federal Circuit held that the infringer was liable for inducing infringement of a patent of which it had no direct knowledge based on its “deliberate indifference” of a known risk.  The infringer deliberately withheld information from its patent attorney when the attorney was performing a freedom-to-operate search.

The Supreme Court upheld the knowledge requirement for proving inducement under § 271(b) and held that “deliberate indifference to a known risk that a patent exists” is not sufficient to meet the knowledge requirement.  In its 8-1 decision, the Court affirmed the decision based on the theory of “willful blindness.”

The Court, with assistance from amici, took the concept of willful blindness from the criminal law context.  The doctrine of “willful blindness” includes two requirements:

(1) the defendant must subjectively believe that there is a high probability that a fact exists and (2) the defendant must take deliberate actions to avoid learning of that fact. 

Willful blindness is a higher standard than recklessness or negligence.  It is more than than knowledge of a substantial risk; it requires active efforts to avoid knowledge of the potentially infringing nature of the defendant’s activities.

Justice Kennedy, in dissent, argued that the Court should not expand § 271(b) to permit liability for willful blindness, but should require that actual knowledge of the patent by the infringer.

This entry was posted on June 1, 2011 at 9:16 am and is filed under Court Decisions, Supreme Court. You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response, or trackback from your own site.