Patent Law Practice Center

Upcoming Audio Briefings On Recent Supreme Court Decisions

The Supreme Court  has decided three cases this past month that could have a big effect on patent law.  To help you understand the significance of these decisions and their implications, PLI is offering three timely and topical One-Hour Audio Briefings.

1. June 24th – Global-Tech v. SEB: Supreme Court Holds knowledge Requirement Satisfied by Willful Blindness for Patent Infringement:  On May 31, 2011, the U.S. Supreme Court handed down its decision in Global-Tech Appliances, Inc. v. SEB S.A. In an 8–1 decision, with Justice Alito writing for the Court, the Court concluded that induced infringement requires knowledge that the induced acts constitute patent infringement, not just knowledge that it was encouraging certain acts which just happened to infringe a patent. Examining the statutory language and tracing pre–adoption case law, the Court further concluded that a defendant’s deliberate indifference to a known risk that a patent exists would not be sufficient to demonstrate knowledge, which was the Federal Circuit’s view below, but that “willful blindness,” well–established in the criminal law context, is enough to satisfy the knowledge element. Although it announced a different standard, the Court concluded that the evidence in this case easily satisfied that standard. For such a doctrine to apply, a defendant must subjectively believe that there is a high probability that a fact exists, and must take deliberate actions to avoid learning of that fact. In dissent, Justice Kennedy argued that the Court took a step too far in concluding that willful blindness is a form of knowledge, and would have required actual knowledge.  This briefing will be conducted by Peter J. Brann, a partner in the law firm of Brann & Isaacson, whose practice focuses on intellectual property litigation, R. Ted Cruz of Morgan, Lewis & Bockius LLP and counsel of record for SEB, and William Dunnegan of Dunnegan LLC and counsel of record for Global-Tech Appliances. (more…)

Global-Tech Appliances, Inc. v. SEB S.A.: Importing criminal law into patent infringement

Tuesday’s Supreme Court decision in the Global-Tech Appliances v. SEB S.A. case set a higher mental state required to show infringement by inducement.  Many in the patent community are contemplating what implications the decision will have on the area of intellectual property? To get you up to speed, Vanessa Perez-Ramos, associate at Birch, Stewart, Kolasch & Birch, sent in this article discussing the key points of the opinion.

Relying on the well-established criminal law doctrine of “willful blindness,” the Court in Global-Tech Appliances, Inc., et al. v. SEB S.A., 563 U.S. _____ (2011), affirmed CAFC’s ruling that Global-Tech was liable for induced patent infringement of SEB’s deep fryer patents under 35 U.S.C. § 271(b).

Pentalpha Enterprises, a Global-Tech subsidiary, purchased an SEB fryer in a foreign market (which fryer unsurprisingly lacked U.S. patent markings) and virtually copied all of the fryer’s features, with the exception of the fryer’s cosmetic elements. Pentalpha hired an attorney to conduct a right-to-use study, but did not inform the attorney that the fryer was a replica of an SEB’s fryer. The attorney failed to locate SEB’s patent, and issued an opinion that Pentalpha’s fryer did not infringe any of the patents found by him. Penthalpa sold the fryers to Sunbeam Products, Inc., and Sunbeam resold them in the U.S. under its own trademarks. After settling a lawsuit against Sunbeam for patent infringement, SEB sued Pentalpha for actively inducing Sunbeam (and others) to sell or offer to sell the fryers at issue in contravention of § 271(b). (more…)

Supreme Court To Review Standard For Proving Induced Patent Infringement

Written by Brandon Baum (Partner at Mayer Brown and Practice Center Contributor) and Matt Watts[1].

The state of mind requirement for proving induced patent infringement under 35 U.S.C. §  271(b) has been the subject of recent and, according to some, inconsistent opinions from the Federal Circuit. On October 12, 2010, the Supreme Court granted certiorari in Global-Tech Appliances, Inc. v. SEB S.A., WL 2629783 (2010), presumably to resolve the confusion.

Section 271(b) states: “[w]hoever actively induces infringement of a patent shall be liable as an infringer.”  While there are many factual scenarios under which a patentee might pursue an inducement claim rather than or in addition to a direct infringement claim, it is frequently invoked where the act of direct infringement is performed by the end-user of a product.  Under Section 271(b), the patentee need not sue the many end-users of a product who directly infringe, but instead may pursue the entity that sold the product to the end-users. (more…)