What is induced patent infringement?

Induced patent infringement is a form of indirect patent infringement that occurs when a party actively causes someone else to infringe on a patent. The party accused of inducement need not perform any infringing act itself; liability attaches because of its role in encouraging or directing the direct infringer.

The statute

Under 35 U.S.C. § 271(b), whoever actively induces infringement of a patent shall be liable as an infringer. The statute is brief. Courts have developed its three requirements through case law.

Three elements a plaintiff must establish

First: underlying direct infringement. To establish liability for induced infringement, a plaintiff must first show that there is an underlying act of direct infringement by a third party. Induced infringement is secondary to direct infringement. Without a third party who has actually committed an infringing act, the inducement claim has no foundation.

Second: knowledge. The Supreme Court in Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754 (2011), held that induced infringement under 35 U.S.C. § 271(b) requires knowledge that the induced acts constitute patent infringement. The defendant must know of the patent and must know that the conduct it is encouraging amounts to infringement of that patent.

Third: specific intent. An induced infringement claim requires demonstrating that the defendant knowingly induced infringement by someone else and possessed the specific intent to encourage another's infringement. The statute's word "actively" signals an affirmative-steps requirement. Passive awareness that some customers might infringe is not active inducement.

The willful blindness doctrine

Global-Tech also settled whether deliberate ignorance could substitute for actual knowledge. The Court held that willful blindness satisfies the knowledge requirement for induced infringement and is distinct from mere recklessness or negligence because it requires the defendant to take affirmative steps to avoid knowledge.

Willful blindness has two prongs. The defendant must subjectively believe there is a high probability that a relevant fact exists. The defendant must also take deliberate actions to avoid learning of that fact.

In Global-Tech, the Court found willful blindness established by evidence that the defendant purchased an overseas product model without U.S. patent markings and withheld from its patent attorney information that it had copied a competitor's design. These deliberate acts to suppress access to information about the relevant patents were sufficient to satisfy the knowledge element even without proof that the defendant had ever read the patent itself.

The practical implication: a company cannot engineer ignorance to avoid liability. Choosing not to conduct a patent search, or deliberately obtaining a foreign version of a product to sidestep U.S. patent markings, can establish willful blindness if the other prong is also satisfied.

Good-faith belief in invalidity is not a defense

The Supreme Court in Commil USA, LLC v. Cisco Systems, Inc. (2015) held that a defendant's belief regarding patent validity is not a defense to an induced infringement claim. The Commil Court reasoned that infringement and validity are separate issues under the Patent Act, and that accused inducers have proper mechanisms to challenge validity, including declaratory judgment actions, inter partes review, and ex parte reexamination.

A party that sincerely believes a competitor's patent should not have issued cannot safely induce others to practice the patent and then invoke invalidity as a complete defense. The correct approach is to challenge the patent directly through an available administrative or judicial proceeding.

Induced infringement vs. contributory infringement

Both induced infringement and contributory infringement are forms of indirect infringement, and both require proof of an underlying act of direct infringement by a third party. The theories differ in what conduct each one reaches.

Contributory infringement under 35 U.S.C. § 271(c) focuses on selling a component of a patented invention that the defendant knew was created to infringe on a patent and that had no substantial non-infringing use. Induced infringement is defined instead by the affirmative encouragement of another's infringement, not by any particular type of transaction or product. A single course of conduct can give rise to claims under both theories simultaneously.

Both require proof of underlying direct infringement by a third party.

Practical notes

• No inducement without a direct infringer. An inducement claim requires proof that at least one third party committed direct infringement. Build the factual record around the direct infringers before asserting inducement against the entity that encouraged them.
• Active steps are required. Passive knowledge that customers might infringe does not satisfy the specific intent element. The conduct must be affirmatively directed at bringing about infringement, such as providing instructions, configuration guidance, or promotional materials aimed at the infringing application.
• Willful blindness is not a safe harbor. A party that takes deliberate steps to avoid learning of a relevant patent, while subjectively believing such a patent probably exists, satisfies the knowledge element as fully as one with actual knowledge. Structured ignorance is not a shield.
• Invalidity beliefs do not negate inducement liability. The proper response to a patent believed to be invalid is to challenge it through inter partes review, ex parte reexamination, or a declaratory judgment action, not to induce third parties to infringe while reserving invalidity as a fallback defense.
• Induced and contributory theories can coexist. A defendant who sells a specially-adapted component and also provides instructions directing buyers to use it in an infringing configuration can face liability under both § 271(b) and § 271(c) on the same facts.