Sec. 271(a) (Direct) Infringement Of Any Type Of Claim

  • BASICS: “Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.” 35 U.S.C. § 271(a).
  • Export Per Se Is Not An Infringing Act: “‘[N]either export from the United States nor use in a foreign country of a product covered by a United States patent constitutes infringement.’” Brumfield (Fed. Cir. 03/27/24). Cf. Paper Converting (Fed. Cir. 09/28/84) (before Section 271(a) amended to include “offers to sell”) (“by the terms of the patent grant, noactivity other than the unauthorized making, using, or selling of the claimed invention can constitute direct infringement of a patent, no matter how great the adverse impact of that activity on the economic value of a patent”).
  • Strict Liability Offense: A defendant’s “mental state is irrelevant. Direct infringement is a strict-liability offense.” Commil USA (U.S. 05/26/2015), on remand Commil II (Fed. Cir. 12/28/15) (no direct infringement).
  • To Be Infringing, Acts Must Be Done Without Authority Of Patent Owner: Sec. 271(a) requires acts done “without authority.” Unclear who has burden on this issue, but alleged infringers have burden on license defense. Where first three steps of four step claimed method were performed by patent owner’s subsidiary (before the patent issued), there was authority and thus no infringement. Monsanto (Fed. Cir. 10/04/07) (“Syngenta responds that claim 4 of the ‘880 patent depends on claim 1 and therefore includes all the steps of claim 1. Thus, claim 4 can only be infringed by the unauthorized performance of all the steps of claims 1 and 4. Consequently, because Monsanto (the patent holder) admittedly performed the steps of claim 1, Syngenta cannot infringe as a matter of law.” “Claim 1 … recites a three-step process for generating an original RO fertile transgenic plant containing DNA that provides herbicide resistance. [C]laim 4 [added] a fourth step of obtaining progeny from a fertile transgenic plant produced by the process of claim 1.”).
  • Personal Liability Of Corporate Officers For Direct Infringement: To prove that a company’s officers are personally liable for direct infringement that the officers commit in the name of the corporation, patentee must prove that the corporation is illegitimate or “is the officers’ ‘alter ego.’” Wordtech Sys. (Fed. Cir. 06/16/10) (but they may be liable for inducement infringement regardless of whether appropriate to pierce the corporate veil.); but see Lubby Holdings (Fed. Cir. 09/01/21) (aff’g liability of corporate officer for direct patent infringement even though he was acting in his corporate capacity and without any need to pierce corporate veil or show that corporation was officer’s alter ego, reading Wordtech narrowly to mean corporate owner or officer cannot be found derivatively liable for corporation’s infringement); Global Traffic (Fed. Cir. 06/04/15) (non-precedential) (suggesting that Wordtech meant only that corporate owners or officers “cannot be found derivatively liable for the corporation’s infringement without piercing the corporate veil”).

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