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Patent Infringement

Written by Gene Quinn
President & Founder of IPWatchdog, Inc.
Patent Attorney, Reg. No. 44,294
Zies, Widerman & Malek
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Posted: November 12, 2008 @ 9:45 pm
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Patent infringement is defined in 35 U.S.C. 271. A person or entity infringes a US patent when, without authority, such person or entity “makes, uses, offers to sell, or sells any patented invention, within the United States” during the term of the patent. First, the patent’s claims must be construed to determine their proper scope and meaning. The Supreme Court has held that such construction must be performed exclusively by the court, not the jury. See Markman v. Westview Instruments, Inc., 116 S.Ct. 1384, 1395-96, 134 L.Ed.2d 577 (1996). Second, the factfinder must compare the properly construed claim to the accused device. It is not appropriate to compare the patentees product with the accused infringing device. Therefore, when acquiring a patent particular attention must be given to claim drafting because the claims define the scope of the exclusive rights owned by the patentee.

For more information on infringement and infringement related topics click on the links below.


Literal Infringement 

A finding of literal (or direct) infringement is warranted if the claim “covers” the accused device, that is, “if the [accused] device embodies every limitation of the claim, either literally or by an equivalent.” Carroll Touch, 15 F.3d at 1576.

Indirect Infringement

“It is well settled that there can be no inducement of infringement without direct infringement by some party. Upon a failure of proof of direct infringement, any claim of inducement of infringement also fails. A finding of contributory infringement likewise requires underlying proof of direct infringement.” See Epcon Gas Systems, Inc. v. Bauer Compressors, Inc., 279 F.3d 1022 (Fed. Cir. 2002); Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 483, 84 S.Ct. 1526, 1530, 12 L.Ed.2d 457 (1964) (“[I]t is settled that if there is no direct infringement of a patent there can be no contributory infringement.” (quoting Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 341, 81 S.Ct. 599, 602, 5 L.Ed.2d 592 (1961))); Joy Technologies, Inc. v. Flakt, Inc., 6 F.3d 770, 774 (Fed.Cir. 1993) (“Liability for either active inducement of infringement or for contributory infringement is dependent upon the existence of direct infringement.”); C.R. Bard, Inc. v. Advanced Cardiovascular Sys., Inc., 911 F.2d 670, 673 (Fed.Cir.1990) (“Of course, a finding of induced or contributory infringement must be predicated on a direct infringement….”); Moleculon Research Corp. v. CBS, Inc., 872 F.2d 407, 410 (Fed.Cir.1989) (“In the absence of direct infringement, [defendant] cannot be held liable for inducing infringement under section 271(b).”); Met-Coil Sys. Corp. v. Korners Unlimited, Inc., 803 F.2d 684, 687 (Fed.Cir.1986) (“Absent direct infringement of the patent claims, there can be neither contributory infringement … nor inducement of infringement….” (citations omitted)); Blackman v. Hadron, Inc., 450 F.2d 781, 782 (2d Cir.1971) (“[A]bsent direct infringement, no action for contributory infringement can be maintained.”).

For a good discussion of both inducement and contributory infringement see Curtis Manufacturing Co., Inc. v. Plasti-Clip Corp., 888 F.Supp. 1212 (D.N.H. 1994).


Inducement of infringement occurs whenever someone “actively induces infringement of a patent.” 35 U.S.C. S 271(b).

On its face, 271(b) is much broader than 271(c) and certainly does not speak of any intent requirement to prove active inducement. However, in view of the very definition of “active inducement” in pre-1952 case law and the fact that 271(b) was intended as merely a codification of pre-1952 law, the Federal Circuit has stated that they are of the opinion that proof of actual intent to cause the acts which constitute the infringement is a necessary prerequisite to finding active inducement. See Water Technologies v. Calco, Ltd., 850 F.2d 660, 668, 7 USPQ2d 1097, 1103 (Fed.Cir.1988)(intent is necessary and that it may be shown by circumstantial evidence).

Contributory Infringement

Contributory infringement occurs whenever someone “offers to sell or sells … a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use.” 35 U.S.C. S 271(c).

Who may be sued for infringement?

It is indisputable that patent infringement is a tort. Carbice Corp. of Am. v. American Patents Dev. Corp., 283 U.S. 27, 33, 51 S.Ct. 334, 336, 75 L.Ed. 819 (1931); Orthokinetics, Inc. v. Safety Travel Chairs Inc., 806 F.2d 1565, 1579 (Fed.Cir.1986). In this regard, the language of section 271(a) “has generally been interpreted to allow a finding of infringement against any entity be it an individual, corporation or otherwise.” Symbol Technologies, Inc. v. Metrologic Instruments, Inc., 771 F.Supp. 1390, 1402 (D.N.J.1993). Officers of a corporation are personally liable for tortious conduct of the corporation if they personally took part in the commission of the tort or specifically directed other officers, agents, or employees of the corporation to commit the tortious acts. United States v. Mottolo, 629 F.Supp. 56, 60 (D.N.H.1984); Orthokinetics, supra, 806 F.2d at 1579.

Moreover, as a “general rule… an officer of a corporation is liable for torts in which he personally participated, whether or not he was acting within the scope of his authority, and that such direct personal involvement by the officer is causally related to the alleged injury.” Mottolo, supra, 629 F.Supp. at 60 (citing Escude Cruz v. Ortho Pharmaceutical Corp., 619 F.2d 902, 907 (1st Cir.1980)). Under such circumstances, there is no need to pierce the corporate veil. “‘The cases are legion in which courts have recognized and imposed personal liability on corporate officers for participating in, inducing, and approving acts of patent infringement.’” Symbol Technologies, supra, 771 F.Supp. at 1402 (quoting Orthokinetics, supra, 806 F.2d at 1579); see generally 4 Donald S. Chisum, PATENTS §16.06[2], at 16-168 to 16-182 (1994).

Without reason, Manville Sales Corp. v. Paramount Sys., Inc., 917 F.2d 544 (Fed.Cir.1990) seemingly departed from generally settled law and sought to create a new standard for section 271(a), necessitating piercing the corporate veil in order to find an officer of a corporation personally liable for patent infringement. Manville, supra, 917 F.2d at 552-53; see also Symbol Technologies, supra, 771 F.Supp. at 1403. Plaintiffs are unable to avail themselves of the Manville court’s recasting of settled law for two reasons.

First, as the court in Symbol Technologies noted, it is not clear that the Federal Circuit intended in Manville to overturn the long-standing precedent that a corporate officer can be liable for direct infringement without piercing the corporate veil. Second, even assuming that Manville does attempt to establish a new rule, it is not binding because the Federal Circuit follows the rule that “prior decisions of a panel of the court are binding precedent on subsequent panels unless and until overturned in banc.” Newell Cos., Inc. v. Kenney Mfg. Co., 864 F.2d 757, 765 (Fed.Cir.1988), cert. denied, 493 U.S. 814 [110 S.Ct. 62, 107 L.Ed.2d 30] (1989). There has been no overturning en banc of the previous standard of determining personal liability for infringement nor was there any reason given by the Manville court for any overturning of the previous standard in Manville. “Where there is direct conflict, the precedential decision is the first.” Newell, 864 F.2d at 765. Therefore, until changed by an en banc decision or a decision of the United States Supreme Court, the long-established rule that a corporate officer can be liable for direct infringement without piercing the corporate veil remains in effect.

About the Author

Eugene R. Quinn, Jr.
President & Founder of IPWatchdog, Inc.
US Patent Attorney (Reg. No. 44,294)

B.S. in Electrical Engineering, Rutgers University
J.D., Franklin Pierce Law Center
L.L.M. in Intellectual Property, Franklin Pierce Law Center

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Gene is a US Patent Attorney, law professor and the founder of He is also a principal lecturer in the top patent bar review course in the nation, which helps aspiring patent attorneys and patent agents prepare themselves to pass the patent bar exam. Gene’s particular specialty as a patent attorney is in the area of strategic patent consulting, patent application drafting and patent prosecution. As an electrical engineer by training his practice primarily focuses on software, computers and Internet innovations, as well as electrical and mechanical devices. Gene has been quoted in the Wall Street Journal, the New York Times, the LA Times, CNN Money and various other newspapers and magazines worldwide.