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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.
If you are the owner of a US patent that is potentially being
infringed and you would like to speak with an attorney to discuss the
possiblity of initiating licensing negotiations or litigation, please
go to the IPWatchdog.com Legal
Services Page and fill out the form as completely as
possible. An attorney will be in touch with you as soon as possible.
For more information on infringement and infringement related topics
click on the links below.
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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.
"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).
Who may be sued... Dealing with Manville...
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.
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