shutterstock_187245494In a separate post, we discussed induced infringement of method claims in view of the Supreme Court’s review of Commil USA v. Cisco Systems.1 In this post, we discuss the differences in the standards for proving willful infringement under 35 U.S.C. § 271(a) and induced infringement under 35 U.S.C. § 271(b), and the opinion requirements, if any, for each.

Induced Infringement under 35 U.S.C. § 271(b)
In 2011, the Supreme Court held that induced infringement requires both knowledge of the existence of a patent and knowledge that the induced acts constitute infringement.2 The Supreme Court also found that these knowledge elements can be met by a showing of “willful blindness.”

The Court explained that willful blindness exists when two requirements are met. First, “the defendant must subjectively believe that there is a high probability that a fact exists.”3  Second, “the defendant must take deliberate actions to avoid learning of that fact.”4  According to the Court, “[t]hese requirements give willful blindness an appropriately limited scope that surpasses recklessness and negligence.”5  “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

Under Federal Circuit case law, a good-faith belief of non-infringement is relevant evidence that tends to show that an accused infringer lacked the intent necessary to be held liable for induced infringement.7 In Commil, the court extended this idea to hold that “a good-faith belief of invalidity is evidence that may negate the specific intent to encourage another’s infringement, which is required for induced infringement.”8 As such, the court saw no real distinction between a good-faith belief of invalidity and a good-faith belief of non-infringement for the specific intent required of induced infringement.

Willful Infringement in the context of Direct Infringement under 35 U.S.C. § 271(a)
Under Seagate, willful infringement exists if the patent owner satisfies a two-prong test. First, the patent owner must prove by clear and convincing evidence that the alleged infringer acted recklessly, i.e., acted despite “an objectively high likelihood that its actions constituted infringement of a valid patent.”9 Second, the patent owner must then show that this objectively high risk was “either known or so obvious that it should have been known” to the alleged infringer.10 The first prong usually turns on whether the infringer’s defenses were reasonable, whereas the second prong involves the infringer’s state of mind.

Opinions of counsel can shield an infringing defendant from paying enhanced damages associated with willful infringement, and the defendant can thus avoid paying these damages.

Comparing the Standards for Willfulness and Induced Infringement
Proving induced infringement is more difficult than proving willfulness because induced infringement requires proving both knowledge of the existence of the patent and knowledge that the induced acts constitute infringement. In contrast, proving recklessness is sufficient to prove willfulness, yet may not be sufficient to show induced infringement.

Both induced infringement and willfulness can be defended against by obtaining opinions of counsel demonstrating that the relevant patent at issue is not infringed. However, several important distinctions exist when considering opinions of counsel in each context. With regard to willfulness, if a defendant loses because the court finds that it infringed a valid patent, that defendant may still avoid willfulness liability if it produces a competent opinion of counsel stating that the patent would not be infringed. Such an opinion “would provide a sufficient basis for [a potential infringer] to proceed without engaging in objectively reckless behavior . . . .”11

In the induced infringement context, a defendant may be able to avoid liability altogether, by producing a competent opinion of counsel. A competent opinion of counsel may negate the intent component of induced infringement by demonstrating a good-faith belief of non-infringement, or if Commil is upheld, a good-faith belief of invalidity.

One interesting side note is whether an unpatentability opinion of counsel under the standards of the Patent Trial and Appeal Board (PTAB) for an inter partes review (IPR) would be sufficient to avoid liability in either context. Unlike in district court, the presumption of validity does not exist in an IPR. In an IPR, patentability of the claims is being challenged rather than their invalidity. Further, the burden is lower for the petitioner to challenge patentability before the PTAB than for a defendant to challenge the patent’s validity in district court. In district court, a defendant must prove invalidity by clear and convincing evidence, whereas at the PTAB, the petitioner must prove unpatentability by a mere “preponderance of the evidence.”

1 Commil USA, LLC v. Cisco Sys., 720 F.3d 1361 (Fed. Cir.), reh’g en banc denied, 737 F.3d 699 (Fed. Cir. 2013), cert. denied, 135 S. Ct. 704 (2014), and cert. granted in part, 135 S. Ct. 752 (2014).
2 Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011).
3 Id. at 2063.
4 Id.
5 Id.
6 Id. at 2071.
7 Commil,720 F.3d at 1368.
8 Id.
9 In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007).
10 Id.
11 Finisar Corp. v. DirectTV Group Inc., 523 F.3d 1323, 1339 (Fed. Circ. 2008).