Minding Patent Infringement

54 Pages Posted: 5 Jan 2011 Last revised: 17 Jan 2011

See all articles by Ted M. Sichelman

Ted M. Sichelman

University of San Diego School of Law


The Patent Act of 1952 provides at 35 U.S.C. § 271(b) that "[w]hoever actively induces infringement of a patent shall be liable as an infringer." This provision codified long-standing precedent deriving from tort law that those who aid and abet direct patent infringement shall be liable for indirect infringement.

Contrary to the views of most scholars, opinions from the Supreme Court and lower courts from the mid-19th century through the passage of the 1952 Act repeatedly held that aiding and abetting direct patent infringement solely required specific intent merely to further the acts that constituted direct infringement, and did not require knowledge of the patent-in-suit. Because Congress codified this precedent, the Supreme Court should find in the pending Global-Tech v. SEB case that Section 271(b) does not require the inducer to know of the applicable patent.

Importantly, this result is sensible as a policy matter. First, it places system and method patent claims on more equal footing. Second, it eliminates a strategy of "willful blindness," whereby potential indirect infringers forgo searching for patents prior to undertaking their potentially infringing behavior - even when it is not costly to do so - to avoid charges of indirect infringement. Third, for those infringers that are aware of patents prior to infringement, it ends the self-serving and generally meaningless "opinion of counsel" defense strategy, whereby outside counsel immunize indirect infringers by writing conclusory - but usually outcome-determinative - letters stating that the patent-at-issue is not infringed, invalid, or unenforceable.

Keywords: patents indirect infringement, inducing infringement, contributory infringement, scienter, state of mind

Suggested Citation

Sichelman, Ted M., Minding Patent Infringement. San Diego Legal Studies Paper No. 11-051. Available at SSRN: https://ssrn.com/abstract=1734380 or http://dx.doi.org/10.2139/ssrn.1734380

Ted M. Sichelman (Contact Author)

University of San Diego School of Law ( email )

5998 Alcala Park
San Diego, CA 92110-2492
United States
(619) 260-7512 (Phone)
(619) 260-2748 (Fax)

HOME PAGE: http://https://www.sandiego.edu/law/faculty/profiles/bio.php?ID=795

Register to save articles to
your library


Paper statistics

Abstract Views
PlumX Metrics