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From the author of Indirect Infringement

Indirect Infringement

If a product doesn’t directly infringe a patent, it may also indirectly infringe. There are two types of indirect infringement: induced infringement and contributory infringement. Encouraging others to infringe a patent is called “induced infringement.” When two products working together infringe on a patent, that’s called “contributory infringement.”

Induced infringement

Induced infringement occurs when some party purposefully causes or encourages another party to infringe a patent. The key work here is “purposely.” Induced infringement must meet these criteria:

  • The infringer actively encouraged or instructed another party on how to use a product or perform a process in a way that infringes the patent claims.
  • The infringer knew of the patent.
  • The infringer knew or should have known that the encouragement or instructions would induce infringement of the patent.
  • The other party actually infringed the patent.

So induced infringement requires that the infringer purposely got another party to infringe a patent. Let’s say you have a software company that produces word processing software, and your competitor has a patent on checking the spelling of words in a document and putting a squiggly red line under misspelled words. You need a spell checker, but you don’t want to infringe, so your product outputs misspelled words to a separate file and you recommend that your customers buy third-party software that reads in that separate file and puts squiggly red lines in the documents. You may be inducing infringement by encouraging your customers to perform the patented method. And don’t try to use an orange line or a chartreuse line, because you’ll probably still be infringing under the doctrine of equivalents.

Contributory Infringement

Contributory infringement occurs when one party who knows about the patent supplies a component to another party to use in an infringing product. Contributory infringement occurs if the party who received the component directly infringes the patent and if the component has the following characteristics:

  • The component is a significant part of the invention.
  • The component is especially made for use in a way that infringes the patent.
  • The supplier knows that the component was especially made for that use.
  • The component doesn’t have any substantial non-infringing use.

So contributory infringement requires that the infringer knowingly supplied another party with a product that was incorporated into a second product, causing the combination to infringe a patent.

Let’s take the example again of your word processing company. Suppose your word processing company decides to buy the third-party squiggle generator software to incorporate into your word processor. You meet with the head squiggler and tell her that your word processor doesn’t infringe on your competitor’s product and the squiggler doesn’t infringe, so you want to embed the squiggler into the word processor to avoid infringement. At that point you’ve just lost the game, because the squiggler company knows that the combination infringes and so they can be found to be contributory infringers. Because it’s your product, you can be liable for direct infringement in this scenario.

However, if the squiggler can be used to underline important words, hyperlinks, and naughty words in addition to misspelled words, then the squiggle company may be ok because the component has significant uses that are non-infringing.

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