Tuesday, June 12, 2012

Contributory Infringement

35 U.S.C. § 271(c)

i4i v. Microsoft

  • "A party is liable for contributory infringement if that party sells, or offers to sell, a material or apparatus for use in practicing a patented process. That 'material or apparatus' must be a material part of the invention, have no substantial noninfringing uses, and be known (by the  party) to be especially made or especially adapted for use in an infringement of such patent.
  • To establish contributory infringement liability, the patent owner must show, among other things, that there are no substantial non-infringing uses.
  • “[N]on-infringing uses are substantial when they are not unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental.”  Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1327 (Fed. Cir. 2009)
  • "In assessing whether a use is substantial, the fact-finder may consider the use’s frequency, . . . the use’s practicality, the invention’s intended purpose, and the intended market.”
  • "Recommending one use over another does not mean the non-recommended use is not substantial."