The New “Willful Blindness” Standard for Inducing Patent Infringement
On May 31, 2011, the Supreme Court articulated the standard for inducing infringement in Global-Tech Appliances Inc. v. SEB SA, Case No. 10-6, 563 U.S. ____ (2011). The Court affirmed the Federal Circuit in finding willful infringement but stated that the proper standard for inducing patent infringement is “willful blindness” as opposed to the prior Federal Circuit standard “deliberate indifference to a known risk.”1
Inducement of Infringement under 35 U.S.C. 271(b)
The patent laws provide that the making, using, selling or importing of a patented invention is, of course, a patent infringement. In addition, 35 U.S.C. 271(b) provides that “[w]hoever actively induces infringement of a patent shall be liable as an infringer.” Thus, the patentee may have a remedy against a manufacturer of a given product even in instances, for example, where the patented invention is a method that is infringed by a consumer’s method of using the manufacturer’s product.
The application of the law of inducement has historically been split. Some cases have held that inducement merely required that one cause the acts that result in infringement. Other cases required more specific intent. The Federal Circuit clarified in 2006 that “inducement requires evidence of culpable conduct, directed to encouraging another’s infringement, not merely that the inducer had knowledge of the direct infringer’s activities”2 and stated that knowledge of the patent was required. Issues remained about the level of knowledge one had to have about the patent as the Federal Circuit and later the Supreme Court explained in the Global-Tech case.
The facts of the Global-Tech case were interesting in that the accused infringer directly copied its competitor’s product and obtained a patent attorney’s freedom to operate opinion. However, the accused infringer did not advise the patent attorney that it had directly copied its competitor’s design which precluded the attorney from being more precise in searching for prior art. The Federal Circuit held the accused infringer liable for inducement in the absence of actual knowledge of the patent since the accused infringer “deliberately disregarded a known risk that [its competitor] had a protective patent."3
The Supreme Court granted certiorari and rejected the “deliberate disregard of a known risk” standard as being too broad. The Supreme Court explained that this standard made defendants liable for inducement even though the conduct was only negligent or reckless. The Supreme Court held “that induced infringement under §271(b) requires knowledge that the induced acts constitute patent infringement.”4 According to the Supreme Court, knowledge could be established not only through proof of actual knowledge, but also through proof of “willful blindness.” Without fully explaining why the doctrine of “willful blindness” in criminal law should be imported into the patent doctrine of inducing infringement, the Court engrafted the criminal law willful blindness standard. The Court held that it had two basic components: “(1) the defendant must subjectively believe that there is a high probability that a fact exists and (2) the defendant must take deliberate actions to avoid learning of that fact.”5 As the Supreme Court explained,
We think these requirements give willful blindness an appropriately limited scope that surpasses recklessness and negligence. Under this formulation, a willfully blind defendant is one who takes deliberate actions to avoid confirming a high probability of wrongdoing and who can almost be said to have actually known the critical facts.6
The practical effects, if any, of the “willful blindness” standard are not immediately apparent. Meaningful statistics on the application of the new standard at the trial court, as well, the Federal Circuit’s views on the proper interpretation of the Global-Tech decision are years away. The application of the doctrine in industries with irregular patenting activities may be further away still. That is, it may be challenging to determine if and when a particular defendant was “willfully blind” if its competitors are radically varying their patent filing activity depending upon the economics of its fiscal year.
What is certain is that “willful blindness” on its face appears to require more stringent proof of culpability than the “deliberate indifference to a known risk” standard. However, in practice juries may well reach the same verdict in an overwhelming number of cases irrespective of the articulated standard in the jury charge. That is, the accused infringer’s conduct with respect to the patent will likely drive the jury to the same result whether they apply “deliberate disregard,” “willful blindness” or even some other standard. And with the subjective belief element, many cases may not be amenable to summary judgment resolution. Accordingly, patent practitioners should continue to attempt to draft claims that will be directly infringed by their competitors so as not to have to rely on the ever-evolving inducement standard of “willful blindness.”
1. Slip Opinion at 10.
2. DSU Medical Corp. v. JMS Co., Ltd., 471 F.3d 1293, 1306 (Fed. Cir. 2006).
3. SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360 (Fed. Cir. 2010).
4. Slip Opinion at 10.
5. Slip Opinion at 13.
6. Slip Opinion at 14.