Federal Circuit Clarifies Intent Required for Inducement Infringement

In Partial En Banc Decision, Federal Circuit holds that inducement under 35 U.S.C. §271(b) requires specific intent to cause infringement

In DSU Med. Corp. v. JMS Co., Ltd., 04-1620 (Fed. Cir. December 13, 2006), DSU sued JMS and ITL Corp. for infringement, inducement to infringe and contributory infringement ofU.S. patent No. 5,112,311 (the ‘311 patent).  The ‘311 patent covers a guarded, winged-needle assembly used in medical procedures, designed to prevent accidental punctures/injuries from the needle during use. 

The claims at issue centered on the term “slotted.”  The design included a slotted guard used to lock a needle in a shielded position while being removed from a patient’s body.  Particular elements were a winged needle assembly with needle, winged needle hub and a slotted, locking guard.  The winged needle assembly was slidably mounted within the guard. 

The alleged infringing device, the “Platypus”, was made by ITL Corp.  The Platypus was essentially a sheath.  Prior to use, the Platypus was in an open shell configuration.  When used, with a closed shell configuration, the two shell halves closed to form a needle guard.

Definition of “Slidably Enclosing”

Claim 1 of the ‘311 patent recites “a guard slidably enclosing a sliding assembly comprising a needle and a winged needle hub.”  As defined in the district court, this feature required the guard to substantially contain the needle assembly at all times.  DSU had contested this definition, and instead asserted that the phrase “slidably enclosing” meant only generally surrounding the needle and hub.  However, because the Platypus is a stand-alone guard without an accompanying needle, the district court granted summary judgment of non-infringement.  In affirming the district court’s construction, the Federal Circuit noted that the sliding assembly, as recited, required the use of the needle.  Moreover, the plain meaning of the term “enclosing” requires that the sliding assembly with the needle be enclosed.  This construction was confirmed by a review of the terminology used in the specification and drawings all emphasize that the device was protective for an included needle.  Viewing both the claims and the specification, the Federal Circuit agreed that “sliding”, and “enclosing” combined with “assembly” clearly indicated that the needle was to be included in such assembly and enclosed at all times.  As such, the Federal Circuit affirmed the district court’s grant of summary judgment for noninfringement. 

Definition of “Slot”

The district court construed the term “slot” with respect to the guard.  Specifically, the guard recites a “slot proportioned to receive a wing of said needle hub.”  Both courts considered “proportioned to receive” as indicating the slot would be relatively sized to accommodate the wings’ thickness.  The claims did not recite a specific slot size requirement.  Claims construction analysis indicated that if “slot” limited the size of the opening to accommodate the “minor” thickness of the ‘311 wings, Platypus’ use would not infringe because its jaws could accommodate any wing thickness.  If, however, “slot” did not have any size limitation, Platypus would infringe.  The Federal Circuit noted that there was no requirement for a specific size of the slot as recited, and the specification and prosecution history also did not confer a more narrow meaning to the recited slot.  As such, the Federal Circuit agreed with the district court’s holding that, when sold in its closed-shell configuration in the U.S., the Platypus literally infringed certain claims of the ‘311 patent as this configuration had a “slot.”  

No Contributory Infringement Where No Evidence of Infringement in theUnited States

The jury in the district court had found that JMS had directly and contributorily infringed since JMS imported the Platypus guards into the U.S. under a sales agreement with ITL.  Prior to importation, JMS assembled the guards into their closed (and infringing) configurations and controlled the shipping into the U.S.  Based upon these facts, DSU also sued ITL for contributory infringement. 

As reviewed by the Federal Circuit, to find contributory infringement under 35 U.S.C. §271 (c), DSU needed to show ITL made and sold Platypus in the U.S., that ITL had no non-infringing uses in the closed configuration, that ITL engaged in conduct in the U.S. that contributed to JMS’s direct infringement, and that JMS engaged in acts of direct infringement on the sales of ITL made in the U.S.  The Federal Circuit held that the record did not show that the resulting infringement occurred in theUnited States. 

Specifically, the Federal Circuit noted that the record showed that ITL only permitted the Platypus’ closed configuration in Malaysia, not the U.S.  The record also showed that only open configuration versions of the Platypus guards were sent to the U.S., but there was no evidence that the Platypus guards were constructed in the closed configuration.  Thus, the Federal Circuit upheld the district court’s denial of DSU’s motion for a new trial on ITL’s contributory infringement. 

En Banc Holding that No Inducement without Specific Intent

DSU additionally argued that ITL induced infringement by inducing JMS to sell the closed configuration Platypuses in theU.S.  On the issue of the requisite intent to induce infringing acts, the Federal Circuit sat en banc in order to resolve conflicting precedent in regard to the intent required to cause inducement. 

Reviewing the intent requirement in Manville Sales Corp. v. Paramount Systems, Inc., 917 F.3d 544 (Fed. Cir. 1990), the court clarified the requirements for inducement under 35 U.S.C. 271 (b), the infringer must have known his actions would induce actual infringement.  Mere knowledge of possible infringement is not inducement, rather specific intent and action must be shown. 

DSU argued that the district court improperly instructed the jury on the required intent by not saying that inducement only requires intent to cause the acts that constitute infringement.  However, the Federal Circuit countered that the infringer must have had specific intent to encourage infringement rather than just knowledge of the actions that constituted infringement, and that this interpretation is supported in other forms of intellectual property as demonstrated in the Supreme Court’s decision in MGM Studios Inc. v. Grokster, Ltd., 125 S. Ct. 2764, 162 L. Ed. 2d 781, 75 USPQ2d 1001 (U.S. 2005).  Thus, the Federal Circuit confirmed that the jury instructions were proper in requiring a showing of intent to cause infringement as opposed to mere knowledge of the acts surrounding the infringement. 

Under the facts of the case, the Federal Circuit held that the record lacked evidence of intent to cause infringement due, in part, to opinions from American and Australian counsel that the Platypus did not infringe.

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