Indirect Infringement

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Indirect Infringement
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271(b) (c)

• (b) Whoever actively induces infringement of a
  patent shall be liable as an infringer.
• Must intend that infringement occur.

• (c) Whoever offers to sells or sells or
  imports a component of a patented machine,
  manufacture, combination or composition, or a
  material or apparatus for use in practicing a
  patented process, constitute a material part of
  the invention, knowing the same to be especially
  made for use in an infringement and not a
  staple article or commodity of commerce suitable
  for substantial noninfringing use, shall be
  liable as a contributory infringer.
• Must know of infringement, but need not intend it.

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Induce v. Contrib

• Someone who sells sauce and instructs the buyer
  how to use the sauce to practice a patent
  claiming pizza made of dough, sauce, and cheese
  can be liable for inducing, even though sauce is
  unpatented.

• Someone who sells a part, knowing that the buyer
  will put it together in a combination that
  infringes, contributes to infringement if its a
  material part of the invention and its not
  capable of substantial noninfringing use.
• Seller of sauce wouldnt be liable if person is
  using it to infringe if sauce has other uses
  (e.g., dip for bread, lasagna, etc.)

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Some Basics

• There can be no liability for induced or
  contributory infringement without a direct
  infringement.
• The party who directly infringes cant use these
  statutes for contribution or indemnity.
• The patent laws do not permit the party who
  directly infringes to sue the party who induced
  or contributed to the infringement.

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More Basics

• Patent 123 claims pizza made with dough, cheese,
  and sauce.

• Bob sells dough and cheese to Susie
• Jill sells sauce to Bob.
• Susie makes pizza with D,C,S.
• Who infringes?
• Does anyone contribute to or induce infringement?
• Change facts to make Susie liable for
  contributory infringement.

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Inducement HP

• BL sells off assets to Ametek, and in doing so
  indemnifies it for infringement of HPs Yesier
  patent.

• Result?
• Why doesnt the indemnity clause make it
  inducement?
• General rule
• Exception

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Repair v. Reconstruction

• Exhaustion Doctrine Once the patentee sells the
  product, he cannot prevent resale of it, or
  repair by the owner.
• The owner owns it.
• The owner can sell it.
• The owner can maintain it.

• What the owner cant do is reconstruct the
  product so that, instead of repairing, hes
  essentially making a new product, and so is
  making aka infringing.

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The Classic Cases

• Aro patent was on a convertible top
• Alleged infringer made replacement cloth tops
• Held repair

• Plug case patent was on a metal tube with a
  rubber plug inside of it to insert into flat
  tires
• Alleged infringer made rubber plugs
• Held reconstruction

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Jazz Photo

• Claim
• Defendants acts
• Repair v. Reconstruct
• Totality of circs

• As to cameras never sold in the US
• As to cameras sold once in the US