Supreme Court Adopts “Willful Blindness” Standard for Induced Infringement
By Raquel Acosta – Edited by Matt Gelfand
Global-Tech Appliances, Inc. v. SEB S. A., 563 U. S. ____ (May 31, 2011)
The Supreme Court affirms the result but not the “deliberate indifference” standard used by the Federal Circuit.
In an 8-1 decision the Supreme Court held that, under 35 U. S. C. § 271(b), inducement of infringement requires that a defendant have knowledge that the acts they induced constituted patent infringement. Deliberate indifference does not satisfy the knowledge requirement, but “willful blindness” does. In so holding, the court applied the criminal law principle of willful blindness to a civil law case and rejected the “deliberate indifference” standard.
PatentlyO provides an overview of the case. Patent Docs reviews the decision and criticizes the Supreme Court’s approach. SCOTUSblog briefly summarizes the holding and provides links to related briefs and documents.
In its opinion, the Court discussed the ambiguity in 35 U. S. C. § 271(b) as to whether intention was required for infringement, and looked to related cases to determine the appropriate standard. In Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U. S. 476 (1964) (Aro II), the Court held that knowledge was required for liability in cases of contributory infringement. The Court reasoned that inducement has common legal roots with contributory infringement, so § 271(b) should require knowledge as does § 271(c). The Court referenced Grokster, an induced copyright infringement case, in its decision, finding that liability for inducement is premised “on purposeful, culpable expression and conduct.” Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U. S. 913, 937 (2005). The court rejected the deliberate indifference standard and adopted the willful blindness standard from criminal law. A defendant is considered willfully blind if he or she “subjectively believe[s] there is a high probability that a fact exists” and “take[s] deliberate actions to avoid learning of that fact.”
The Court affirmed the Federal Circuit’s conclusion that petitioner Pentalpha Enterprises, Ltd. had induced others to infringe on SEB’s U.S. patent on deep-fryer technology. Pentalpha purchased a fryer containing SEB’s technology (which lacked U.S. patent markings) in Hong Kong, copied all but the cosmetic details, and retained a patent attorney to conduct a right-to-use study without divulging that the design had been directly copied. Pentalpha went on to sell deep fryers to Sunbeam Products, Inc., Fingerhut Corp., and Montgomery Ward & Co., who then redistributed the fryers in the U.S. under their respective trademarks. Applying the willful blindness standard, the Court held that the evidence was sufficient to determine that Pentalpha induced infringement under the appropriate standard of review.
Justice Kennedy dissented, indicating that while he agrees that 35 U.S.C. § 271(b) requires a showing of knowledge, willful blindness is not knowledge. He goes on to caution the Court against analogizing to criminal law in order to broaden a legislative proscription. Even accepting, arguendo, the majority’s standard, he would have remanded to the Court of Appeals to consider whether the evidence was sufficient to satisfy that heightened standard.
This case clarifies the legal standard to use for cases involving induced infringement under § 271(b). The Court analogizes to criminal law, adopting a two part willful blindness standard while rejecting the Federal Circuit’s deliberate indifference standard. This case raises the the plaintiff’s by requiring proof of knowledge or willful blindness of infringement.
Raquel Acosta is a 2L at Harvard Law School.