Sec. 271(c) (Contributory) Infringement

  • BASICS: “Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.” 35 U.S.C. § 271(c). As this is a “contributory” liability doctrine, there must be a direct infringement for there to be Sec. 271(c) liability.

a) knowledge of infringement

  • Must Know Patent Is Infringed By The Combination: At very least, the accused must know of the patent to be liable for its contributory infringement: “§ 271(c) requires knowledge of the existence of the patent that is infringed.” Global-Tech (U.S. 05/31/2011) (calling this “§ 271(c)’s intent requirement.”). But statute implies more: “knowing the same to be especially made or especially adapted for use in an infringement of such patent,” suggesting that accused party must know there is an infringement. And, S. Ct. has held that statute requires knowledge of infringement: “On this question a majority of the Court is of the view that § 271(c) does require a showing that the alleged contributory infringer knew that the combination for which his component was especially designed was both patented and infringing.” Aro Mfg. (Aro II) (U.S. 06/08/1964); “In Aro II, a majority held that a violator of § 271(c) must know ‘that the combination for which his component was especially designed was both patented and infringing,’ 377 U.S., at 488, and as we explain below, that conclusion compels this same knowledge for liability under § 271(b).” Global-Tech (U.S. 05/31/2011); see Life Tech. (Promega) (U.S. 02/22/2017) (7-0) (Global-Tech “substantially equat[ed] the intent requirements for §§ 271(b) and 271(c)”); accord H. Lundbeck (Fed. Cir. 12/07/23) (aff’g no contributory infringement; “while section 271(c) does not use the word ‘intent,’ the statute still imposes a scienter requirement—that the accused infringer sells articles ‘knowing the same to be especially made or especially adapted for use in an infringement of such patent.’ The Supreme Court has characterized this as ‘§ 271(c)’s intent requirement.’”); Akamai Tech. III (Fed. Cir. 05/13/15) (2-1) (“§ 271(c) also entails causing customers to act as they did and intending the acts and/or results.”), vacated Akamai Tech. IV (Fed. Cir. 08/13/15) (en banc); Commil USA (U.S. 05/26/2015) (“contributory infringement requires knowledge of the patent in suit and knowledge of patent infringement.”). “Contributory infringement requires ‘only proof of a defendant’s knowledge, not intent, that his activity cause infringement.’” Lifetime (Fed. Cir. 09/07/17); accord Nalco (Fed. Cir. 02/27/18) (rev’g trial court dismissal of contributory infringement complaint under Iqbal / Twombly).

b) “offers to sell or sells”

  • Providing A Service Is Not A Sale: merely providing a service, without selling the alleged component, does not trigger Sec. 271(c) liability. PharmaStem Therapeutics (Fed. Cir. 07/09/07); The Cleveland Clinic I (Fed. Cir. 06/16/17) (aff’g denial of motion to amend to add contributory infringement; report provided by testing service is not a “material and apparatus”).

c) “component,” “material or apparatus”

  • Installation Disk Might Not Be A “Component”: Without mentioning Sec. 271(c), the Sup. Ct. in AT&T (U.S. 04/30/2007) addressed but did not resolve whether an installation disk that is temporarily inserted into a computer but need not remain in the computer for it to work, could constitute a “component” under Sec. 271(f). A three-Justice concurrence said No and a four-Justice plurality said it need not decide the issue.
  • Component, Apparatus Or Material Must Be Physical?: We’ve successfully argued that what is sold, etc. must be physical, not mere intangible information. In view of Ricoh (Fed. Cir. 12/23/08) severely limiting the most common defense to contributory infringement, this argument becomes more important. But Lucent Tech. (Fed. Cir. 09/11/09) rejected position that AT&T (U.S. 04/30/2007) bars finding software to be “material or apparatus” under Sec. 271(c), and i4i (Fed. Cir. 03/10/10), aff’d on other grounds (U.S. 06/09/2011) ignored this argument.
  • TIPS:

d) “material part of the invention”

  • Quanta Perhaps Put Teeth Into Sec. 271(c)’s “A Material Part Of The Invention”: In ruling that the sale of certain components of a combination exhausts patent claims directed to a method of using that combination, the S. Ct. perhaps construed the Sec. 271(c) phrase “a material part of the invention” narrowly, to mean that the component includes “all of the inventive aspects of” the claimed “invention”: “Like the Univis lens blanks, the Intel Products constitute a material part of the patented invention and all but completely practice the patent. Here, as in Univis, the incomplete article substantially embodies the patent because the only step necessary to practice the patent is the application of common processes or the addition of standard parts. Everything inventive about each patent is embodied in the Intel Products…. The Intel Products embody the essential features of the LGE Patents because they carry out all the inventive processes when combined, according to their design, with standard components.” Quanta (U.S. 06/09/2008).

e) substantial non-infringing use

  • Unclear What Constitutes “Substantial” Non-Infringing Use: The law is unsettled on meaning of “substantial.” Any reasonable use is a substantial use, even if not commercially viable. “Non-infringing uses are substantial when they are not unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental.” Vita-Mix (Fed. Cir. 09/16/09)); accord In re Bill of Lading (Fed. Cir. 06/07/12) (“That practicing the patented method may be the most logical or useful purpose for Appellees’ products does not render the alternative uses ‘unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental.’”); Toshiba (Fed. Cir. 06/11/12) (aff’g Summ. J. of no contributory infringement). But see i4i (Fed. Cir. 03/10/10) (upholding verdict of contributory infringement despite three non-infringing ways of using the accused code, based on evidence that those uses would deprive user of the intended benefit of the accused feature), aff’d on other grounds (U.S. 06/09/2011).
  • Non-Infringing Uses Expansive In Some Other Contexts: in implied license context, Fed. Cir. took expansive view of non-infringing uses in Glass Equipment (Fed. Cir. 04/05/99) (need not be commercially viable, only reasonable).
  • May Need To Show Actual Non-Infringing Use Not Merely Hypothetical Non-Infringing Use: Bio-Rad (Fed. Cir. 05/28/21) (aff’g contributory infringement and ITC finding that each proposed design-around is a “hypothetical system that is not yet available to 10X’s customers,” as consistent with precedent, “which focuses on the real way in which the accused product is made, used, and sold”); Mentor H/S, 244 F.3d 1365 (Fed. Cir. 2001) (rev’g JMOL of no contributory and no inducement; “The jury was entitled to reject Misonix’s assertions that Lysonix 2000 had other potential uses because the record does not indicate any actual uses of the device other than ultrasonic liposuction.”).
  • Irrelevant Whether Non-Infringing Uses Would Infringe Another Patent: “Substantial noninfringing use in section 271(c) refers to uses that do not infringe the patent in question, not other patents.” Lundbeck (Fed. Cir. 12/07/23) (aff’g no contributory infringement because generic drug has non-infringing uses even if those uses would infringe other patents of the plaintiff).
  • Unauthorized Uses Of FDA-Regulated Drug Are Not Substantial Uses: Even though doctors are allowed to prescribe for other uses, and do so. Eli Lilly (Fed. Cir. 07/29/11) (non-precedential); accord Grunenthal (Fed. Cir. 03/28/19) (aff’g no contributory infringement by ANDA label where some experts testified that FDA-authorized and non-infringing uses would not be unusual).
  • Plaintiff Need Show Only That Distinct And Separate “Component” Has No Substantial Non-Infringing Use: Labeling it “an important, and previously unresolved, question,” 2-1 panel held that contributory infringement arises where sold devices (optical disc drives) “contain hardware or software components that have no substantial noninfringing use other than to practice [the] claimed methods,” even though device has other hardware and embedded software module that cannot be used to infringe—distinguishing Hodosh (Fed. Cir. 11/25/87) and relying on Grokster (U.S. 06/27/2005) (“one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties.”) Ricoh (Fed. Cir. 12/23/08). May apply only if the “infringing” component is “distinct” and “separable” from other components. See Koninklijke Philips (Fed. Cir. 07/28/16) (non-precedential) (rev’g jury verdict of no contributory infringement; “no reasonable jury could find disabling of this critical self-test feature to be anything but a separate and distinct mode of operation for the defibrillator devices.”; “we have generally been fairly liberal in finding the accused components separate.”); Lucent Tech. (Fed. Cir. 09/11/09) (endorsed Ricoh and rejected reliance on Hodosh, ruling that “date picker” tool in Microsoft Outlook had no non-infringing use, and jury could presume that Microsoft included the feature with intent that it be used, citing Grokster); i4i (Fed. Cir. 03/10/10) (because accused XML editor was omitted from some versions of Word, it could be deemed “separate and distinct” and be the subject of the jury’s substantial non-infringing uses inquiry), aff’d on other grounds (U.S. 06/09/2011); accord Fujitsu (Fed. Cir. 09/20/10) (even though accused feature by default is deactivated, it has no substantial non-infringing uses). [Consider Seeking S. Ct. Review.]
    • Distinguishing Ricoh: “The accused blenders’ ball and socket joint, interrupted ribbing, and rubber O-ring are not merely additional, separable features of the device … these features are defining features of the device, are directly related to the use of the stir stick, and are useful only if the stir stick is used to stir the contents of the pitcher and push the ingredients into the blades.” Vita-Mix (Fed. Cir. 09/16/09); In re Bill of Lading (Fed. Cir. 06/07/12) (“Where the product is equally capable of, and interchangeably capable of both infringing and substantial non-infringing uses, a claim for contributory infringement does not lie.”; distinguishing Ricoh; and aff’g R. 12(b)(6) dismissal because complaint exhibits showed non-infringing uses).
    • TIPS:

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