Induced infringement is a form of secondary liability for patent infringement, where a person does not commit direct infringement but creates or sells a product with advertising or instructions that will cause the consumers of the products to act in direct infringement. Statutory language of induced infringement can be found in 35 USC 271(b).
To establish induced infringement an accusing party must show that the accused party:
1) Knowingly induced one or more third parties to perform some steps of its patent, while
2) The accused party performed other steps, with the result that the parties collectively practiced all of the steps in the claimed pattern
1) Knowingly induced infringement by proving that a party knowingly induced others to infringe patent claims, such that the other parties, without the participation of the inducer, collectively perform all the steps in a claimed patent.
Induced infringement is commonly found when an accused party gives instructions to consumers on how to modify existing technology to work with their technology. Therefore, causing the consumers to change default settings and infringe.
Induced infringement was litigated in Akamai Technologies, Inc. v. Limelight Network, Inc. In Akamai, Akamai held patent with claims directed towards providing web content, where web content from content provider is stored on Akamai’s servers, the the content provider’s webpage is modified to retrieve content on Akamai’s server’s. In this case, Limelight gave instructions to their consumers on how to modify their websites so they could retrieve their content from Limelight’s servers. In other words, Limelight performed all but one of the elements in Akamai’s claimed patent, but then encouraged their customers to perform the missing step.
Therefore, Akamai argued that Limelight induced infringement on their patents because they gave instructions to consumers to perform the required steps that would infringe Akamai’s patents. However, Akamai did not allege that Limelight performed an entire patent method.
The Federal circuit in this case found that Limelight did not induce infringement because Limelight did not perform all the steps in the Akamai’s claimed patent, or directed consumers to perform all the steps in the method. However, in en banc rulings the Federal Circuit reversed their earlier ruling, and created a standard where a plaintiff no longer has to establish that an accuser induced another party to perform the entire patent claims. The Federal circuit in the en banc ruling stated that a plaintiff must establish that the accused party had the specific intent to induce the infringing acts, but induced infringement may be found by collective acts of the accused patty and the consumers that they induced to infringe the patents.
PATENT ATTORNEY TAKE-A-WAYS:
1) This is one of the reasons why many companies do not allow, or state in their contracts with their consumers that the consumers may not perform modifications to the existing hardware. A lot of time companies do desire to have the features of their competitors in their product, but because of licensing patent deals they are unable to include them in their product. Also, by companies such as Apple making a big fuss about their phones not able to be “jail broke,” they alive themselves out of a lot of induced infringement.
2) As a patent attorney when drafting claims include claims with different scopes. This may create a patent family with claims where an induced infringer may meet all the claimed elements in at least one of the patents in a patent family.
3) When drafting claims, don’t limit language to direct infringement. Having method claims or systems claims where a device is “configured to” perform some action may allow your claimed scope to be broader than what it actually doing at any given time.