Patent infringement is established when an entity practices a claimed invention (i.e., direct infringement) or helps another practice the claimed invention (i.e., direct infringement).  Direct infringement does not require knowledge of the patent, whereas, indirect requires the infringer to know about the patent. By the end of this article, you’ll understand these concepts and how they impact claim drafting and determining if you are liable for patent infringement even though you didn’t practice the claimed invention.

What is Direct Infringement?

Direct infringement occurs when someone makes, uses, sells, offers to sell, or imports a patented invention without the patent owner’s permission. The infringer is practicing the entire claim, meaning all elements of the patented invention are being used or made by the infringer.

Examples:

• A company manufactures and sells a patented product without authorization from the patentee.
• A manufacturer uses a patented process in their production line.

Key Features of Direct Infringement:

1. Strict Liability: Direct infringement is a strict liability offense. The infringer does not need to know about the patent or their infringement to be liable. However, this applies only if the patent owner has properly provided constructive notice by marking products with the patent number. Without proper patent marking, actual notice (i.e., knowledge) of the patent is required to claim damages.
2. Preferred Type of Infringement: Direct infringement claims are generally easier to enforce because they don’t require proving the infringer’s knowledge or intent. In contrast, indirect infringement requires evidence of knowledge or actions to encourage another to infringe.

What is Indirect Infringement?

Indirect infringement occurs when an entity contributes to or induces another to directly infringe a patent. The entity isn’t directly.  It’s a third party such as the end user or customer.  There are two primary forms of indirect infringement: active inducement and contributory infringement. Unlike direct infringement, indirect infringement requires knowledge of the patent and infringing activity, making it more challenging to prove.

1. Active Inducement of Infringement

Active inducement, defined under 35 U.S.C. § 271(b), occurs when someone actively encourages or aids another party to infringe a patent.

Example: A company provides detailed instructions to customers on how to use a product in a way that infringes a patent.

Key Elements:

• Knowledge and Intent: The inducer must know about the patent and that their actions would lead to infringement.  Even if they didn’t know, they can still be held to have such knowledge if they were willfully blind to the patent.
• Specific Intent Required: The inducer must intentionally encourage the infringement.

2. Contributory Infringement

Contributory infringement, defined under 35 U.S.C. § 271(c), occurs when someone supplies a component that is specifically designed to be used in an infringing product or process and has no substantial non-infringing use.

Example: A company sells a specialized part that can only be used to perform a patented method.

Key Elements:

• Knowledge Required but Not Specific Intent: Unlike inducement, contributory infringement does not require intent. Instead, liability is established by showing that the component is specifically designed for use in a system or method that infringes the patent.  Once again, willful blindness is all that is required.

Claim Drafting Strategy

When drafting patent claims, it’s critical to consider both direct and indirect infringement. Your goal is to target the party whose actions you want to stop and ensure that your claims encompass the activities of that target. Because liability can be established with indirect infringement, a claim can be crafted to target anyone along the entire supply chain up and down from the manufacturer to the end user.

1. Direct Infringement as the Primary Goal: Ideally, draft claims so that your target directly infringes them. For example:
   • If you want to enforce your patent against a manufacturer, craft claims that cover their manufacturing process or product.
   • If you want to enforce your patent against end users, focus on claims covering the end-use of the invention.
2. Backup Claims for Indirect Infringement: Sometimes, your target may not directly practice the invention. For example, a manufacturer might not make the invention. They might make just one part of the invention, which is the expensive part of the invention.  In such cases, include backup claims to establish liability for:
   • Active Inducement: Think whether their is a way to get the target to actively induce others to infringe based on them making only one component of the invention.  If yes, write the claim no matter how far fetch it is.
   • Contributory Infringement: The target might be making the most expensive, thus most profitable component of the invention.  Write a claim solely for the component.

The basic PTO fee when filing a nonprovisional application allows for 3 independent claims and 20 claims total.  But, more can be submitted with the payment of a fee.  If warranted, file more claims.

By drafting claims that attack the target from multiple angles, you maximize the enforceability of your patent and protect against design-arounds.

Defending Against Infringement Claims

If you’re on the receiving end of a patent infringement lawsuit, understanding the theories of infringement is crucial:

• Direct Infringement: Determine if your actions involve practicing all elements of the patented invention.
• Indirect Infringement: Assess whether your activities, such as supplying parts or providing instructions, contribute to or induce others to infringe.

Understanding whether the patent holder’s claims accuse you of direct or indirect infringement can help you identify weaknesses in their case and build an effective defense strategy.

Practical Takeaways

1. Direct Infringement as a Claim Drafting Priority: Aim to craft claims that the target will directly infringe. Direct infringement claims simplify enforcement and avoid the need to prove knowledge or intent.
2. Backup Claims for Indirect Infringement: When direct infringement isn’t feasible, include claims for indirect infringement. These claims can establish liability for manufacturers or distributors who contribute to or induce infringing activity.
3. Understand the Accusation in Infringement Cases: If facing a lawsuit, identify whether the claims accuse you of direct or indirect infringement. This understanding can clarify the patent holder’s strategy and inform your defense.

Contact us today at (949) 433-0900 to schedule a consultation. Let us help you navigate the intricacies of patent law, safeguard your innovations, and develop a strategy tailored to your needs.