Under 35 U.S.C. § 271(b) “[w]hoever actively induces infringement of a patent shall be liable as an infringer.” On October 12th, the Supreme Court has granted certiorari (link below) for the case of Global-Tech v. SEB (S. Ct. No. 10-6) to determine whether “deliberate indifference of a known risk” that infringement may occur satisfies the state-of-mind element of a claim for actively inducing infringement. Traditionally, the standard has been that the alleged inducer “knew of the patent” as held by DSU Medical Corp. v. JMS Co., Ltd., 471 F.3d 1293 (Fed. Cir. 2006) (en banc). However, this standard was recently eroded by SEB (T-Fal) v. Montgomery Ward & Co., 594 F.3d 1360 (Fed. Cir. 2010), in which the Federal Circuit held that a subjective “deliberate indifference” to potential patent rights is sufficient, while comparing and disregarding a more objective “should-have-known” standard. The petition for cert. was supported by an amicus brief co-signed by a number of influential professors, who argued that the inconsistencies should be resolved.
But without actual knowledge being required, no matter whether the standard is an objective test or a more subjective one that attempts to take into account the state of mind of the alleged inducer(s), it is easier to make a claim for inducement of infringement. Under this standard, to avoid being vulnerable to a claim, companies need to take greater precautions to carefully survey the patent landscape in which they do business, and will be forced to have greater respect for patent rights. As the Supreme Court approaches settling the question of what is required to satisfy the state-of-mind element of inducement, overarchingly it will be contemplating policies of the enforceability of patents, which is directly associated with the overall value of patents to their owners and licensees.
–Note by Nicholas P. Lanzatella, Schwegman, Lundberg & Woessner.