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IP Updates
Inducement
Strategic Considerations for the New Inducement Landscape
On Dec 18, 2006, in DSU Medical Corp. v. JMS Co. Ltd., the Court of Appeals for the Federal Circuit issued an en banc decision that clarified the scienter requirement for inducement. The court held that under 35 USC 271(b) "inducement requires evidence of culpable conduct, directed to encouraging another's infringement, not merely that the inducer had knowledge of the direct infringer's activities."
Click here for a copy of the opinion
Citing the Supreme Court's treatment of induced copyright infringement in MGM Studios, Inc. v. Grokster, Ltd., 125 S. Ct. 2764 (2005), and the Federal Circuit case cited in Grokster, the court held that it is insufficient for an accused inducing infringer to have an "intent to cause the acts that produce direct infringement. Beyond that threshold knowledge, the inducer must have an affirmative intent to cause direct infringement." Although the Federal Circuit noted that specific intent is required for inducement, the court also endorsed a negligence standard, quoting the Manville Sales test: "[t]he plaintiff has the burden of showing that the alleged infringers actions induced infringing acts and that he knew or should have known his actions would induce actual infringements." Of greatest practical import, the panel decision that applied the en banc test found no inducement based in large part on the fact that the accused infringer had obtained a noninfringement opinion.
We have established this section of our website to provide our clients with case materials - including decisions and hearing transcripts - and constant updates on the evolving law of inducement in patent cases.
This section of our website is continuously updated, so check back often. Or, you can receive updates by email, by clicking here.
Speaking Engagements/Slide Presentations
Katherine Kelly Lutton, Christian Chu, and Ann Cathcart Chaplin have presented in multiple venues on Strategic Considerations for the New Inducement Landscape, including at a PLI seminar on February 5, 2007; at the April 27, 2007 LEAD conference in San Diego; and at IP Law & Business's Innovations in IP Litigation Conference in San Jose on May 16, 2007.
Inducement Cases After the Federal Circuit's Decision in DSU
| Case Name
| Court
| Date
|
Disposition
|
| Eli Lilly and Co. v. Actavis Elizabeth LLC |
D.N.J. |
December 31, 2009 |
Grants motion for summary judgment of induced infringement |
| i4i Ltd. v. Microsoft Corp. |
Fed. Cir. |
December 22, 2009 |
Affirmed denial of motion for judgment as a matter of law of no induced infringement |
| Meyer Intellectual Props. Ltd. v. Bodum, Inc. |
N.D. Ill. |
December 15, 2009 |
Granted motion for summary judgment of induced infringement |
| Mallinckrodt Inc. v. E-Z-EM Inc. |
D. Del. |
December 3, 2009 |
Granted motion to amend complaint to add induced infringement claim |
| Roche Palo Alto LLC v. Ranbaxy Labs. Ltd. |
D.N.J. |
September 30, 2009 |
After bench trial, found no induced infringement |
| Fujitsu Ltd. v. Netgear, Inc |
W.D. Wis. |
September 18, 2009 |
Granted motion for summary judgment of no induced infringement |
| Vita-Mix Corp. v. Basic Holding, Inc. |
Fed. Cir. |
September 16, 2009 |
Affirmed grant of motion for summary judgment of no induced infringement |
| Lucent Techs., Inc. v. Gateway, Inc. |
Fed. Cir. |
September 11, 2009 |
Affirmed denial of motion for judgment as a matter of law of no induced infringement |
| i4i Ltd. v. Microsoft Corp. |
E.D. Tex. |
August 11, 2009 |
Denied motion for judgment as a matter of law of no induced infringement |
| Abraxis Bioscience, Inc. v. Navinta, LLC |
D.N.J. |
August 3, 2009 |
After bench trial, found induced infringement |
| Ecolab, Inc. v. FMC Corp. |
Fed. Cir. |
June 9, 2009 |
Affirmed denial of motion for judgment as a matter of law of no induced infringement |
| AstraZeneca LP v. Apotex, Inc. |
D.N.J. |
May 14, 2009; May 22, 2009 |
Granted motion for preliminary injunction based on evidence of intent to induce infringement |
| Cornell Univ. v. Hewlett-Packard Co. |
N.D.N.Y. |
April 24, 2009 |
Denied motion for judgment as a matter of law of no induced infringement |
| Flex-Ability Concepts, LLC v. Radius Track Corp. |
W.D. Okla. |
April 6, 2009 |
Granted motion for summary judgment of no induced infringement |
| Anchor Wall Sys. v. Rockwood Retaining Walls, Inc. |
D. Minn. |
March 31, 2009 |
Denied motion for judgment as a matter of law of no induced infringement and for a new trial re the same |
| Meyer Intellectual Props. Ltd. v. Bodum, Inc. |
N.D. Ill. |
February 11, 2009 |
Granted summary judgment of induced infringement |
| Kinetic Concepts, Inc. v. Blue Sky Med. Group, Inc. |
Fed. Cir. |
February 2, 2009 |
Denied motion for judgement as a matter of law of induced infringement |
|
U.S. Phillips Corp. v. Iwasaki Elec. Co. |
S.D.N.Y. |
January 13, 2009 |
Denied motion for judgement as a law of no induced infringement |
| Ricoh Co. v. Quanta Computer Inc. |
Fed. Cir. |
December 23, 2008 |
Vacated grant of summary judgement of no induced infringement |
|
Kyocera Wireless Corp. v. Int'l Trade Comm'n
| Fed. Cir.
| October 14, 2008
| Vacated and remanded ITC determination of induced infringement.
|
| Broadcom Corp. v. Qualcomm, Inc.
| Fed. Cir.
| September 24, 2008
| Affirmed judgment of induced infringement.
|
| Kowalski v. Friend
| D. Hawaii
| August 27, 2008
| Denied motion for summary judgment of induced infringement
|
| Tribune Star, Inc. v. Walt Disney Co.
| C.D. Ill.
| August 14, 2008
| Granted motion to dismiss complaint of induced infringement.
|
| Lucent Techs., Inc. v. Gateway, Inc.
| S.D. Cal.
| June 19, 2008
| Denied motion for judgment as a matter of law of no induced infringement.
|
| Monsanto Co. v. Parr
| N.D. Ind.
| April 22, 2008
| Granted injunction based on finding of induced infringement.
|
| Symantec Corp. v. Computer Assocs. Int'l, Inc.
| Fed. Cir.
| April 11, 2008
| Reversed grant of summary judgment of no induced infringement.
|
| Veritas Operating Corp. v. JMS Co.
| W.D. Wash.
| February 20, 2008
| Granted defendant's motion for summary judgment of no induced infringement.
|
| Commissariat a L'Energie Atomique v. Samsung Elecs. Co.
| D. Del.
| November 2, 2007
| Denied plaintiff's motion for summary judgment of induced infringement.
|
| Takeda Pharms. Co. v. Sandoz, Inc.
| S.D.N.Y.
| October 9, 2007
| Denied defendant's motion to dismiss for failure to state a claim of induced infringement.
|
| Gammino v. Cellco P'ship
| E.D. Pa.
| October 4, 2007
| Granted summary judgment of no induced infringement.
|
| VNUS Med. Techs., Inc. v. Diomed Holdings, Inc.
| N.D. Cal.
| October 2, 2007
| Denied plaintiff's motion for summary judgment of induced infringement.
|
| F&G Research, Inc. v. Google, Inc.
| S.D. Fla.
| September 21, 2007
| Granted motion for Rule 11 sanctions, in part, because the complaint included no allegation that the defendant received notice or otherwise knew of the patent.
|
| ACCO Brands, Inc. v. ABA Locks Mfrs. Co.
| Fed. Cir.
| September 12, 2007
| Overturned jury verdict of induced infringement because of a lack of substantial evidence of direct infringement.
|
| Nichia Corp. v. Seoul Semiconductor Co.
| N.D. Cal.
| August 22, 2007
| Granted summary judgment of no induced infringement.
|
| Boston Scientific Corp v. Johnson & Johnson
| N.D. Cal.
| August 21, 2007
| Granted summary judgment of no induced infringement.
|
| Advanceme Inc. v. RapidPay, LLC
| E.D.Tex.
| August 14, 2007
| Found induced infringement in bench trial.
|
| Epicrealm, Licensing, Inc. v. Autoflex Leasing, Inc.
| E.D.Tex.
| June 26, 2007
| Granted summary judgment of no induced infringement.
|
| Fellowes, Inc. v. Michilin Prosperity Co., Ltd.
| E.D. Va.
| June 22, 2007
| Granted, inter alia, JMOL that defendant induced infringement
|
| Semiconductor Energy Laboratory Co. v. Chi Mei Optoelectrics Corp.
| N.D. Cal.
| June 19, 2007
| Denied, in relevant part, summary judgment of no indirect infringement.
|
| Static Control Components v. Lexmark Intl, Inc.
| E.D. Ky.
| May 11, 2007
| Denied, in relevant part, summary judgment of no indirect infringement.
|
| Wing Shing Prods. (BVI), Ltd. v. Simatelex Manufactory Co., Ltd
| S.D. NY.
| Mar. 29, 2007
| Granted summary judgment of induced infringement.
|
| Cardiac Pacemakers, Inc. v. St. Jude Med., Inc.
| S.D. Ind.
| Mar. 26, 2007
| Denied summary judgment of non-infringement.
|
| Lucent Techs. Inc. v. Gateway, Inc.
| S.D. Cal.
| Mar. 21, 2007
| Granted in part, and denied in part, summary judgment of no indirect infringement.
|
| Lucent Techs. Inc. v. Gateway, Inc.
| S.D. Cal.
| Mar. 19, 2007
| Granted in relevant part summary judgment of no indirect infringement).
|
| Iridex Corp. v. Synergetics USA, Inc.
| E.D. Mo.
| Jan. 31, 2007
| Summary judgment of no infringement. |
|
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