A Brief History of Indirect Liability for Patent Infringement
Adams, Charles W., Santa Clara Computer & High Technology Law Journal
The Patent Act of 1952 codified liability for active inducement of infringement and contributory infringement in 35 U.S.C. [section] 271. The patent law doctrines of active inducement of infringement and contributory infringement had developed out of a line of cases in the nineteenth century, but the United States Supreme Court eventually ruled that they conflicted with the doctrine of patent misuse. The enactment of [section] 271 overruled the Supreme Court's decisions that the defense of patent misuse prevailed over the doctrines of active inducement of infringement and contributory infringement. The Senate Report that accompanied the legislation indicated that active inducement of infringement was broader than contributory infringement and that contributory infringement was intended to cover the most common circumstance. The Sony and Grokster decisions make this history relevant to the indirect infringement of copyrights.
This Article surveys the historical development of the doctrines of contributory infringement and inducement of infringement in patent law. This history has a number of interesting twists and turns. Contributory infringement originated in case law as a way to enable a patentee to enforce a patent when it was being infringed by a large number of persons whom it was impractical to sue together. The doctrine of contributory infringement permitted the patentee to sue an entity that had instigated the collective infringement either by selling a product that had no use other than to infringe the patent, or using other means to encourage infringement, such as providing instructions on how to infringe the patent.
Shortly after the doctrine of contributory infringement developed in the courts, some patentees found ways to use it to extend their patent monopolies beyond the scope of their patents. This was accomplished primarily through the use of tying arrangements, which required purchasers of patented products to also purchase unpatented goods. Congress responded by enacting a special antitrust law, the Clayton Act, which included prohibiting the use of tying arrangements to create a monopoly in unpatented goods. (1) In addition, the Supreme Court developed the doctrine of patent misuse to bar a patentee from extending a patent monopoly beyond the scope of the patent. (2)
The doctrine of patent misuse expanded rapidly until in a remarkable pair of decisions the Supreme Court ruled that the patent misuse doctrine trumped the doctrine of contributory infringement and generally barred patentees from obtaining relief for contributory infringement. (3) In response to the Supreme Court's decisions, Congress enacted 35 U.S.C. [section] 271 as part of the Patent Act of 1952. (4) Section 271 codified the case law doctrine of contributory infringement in paragraphs (b) and (c) and also restricted the patent misuse doctrine in paragraph (d) so as not to interfere with proper uses of the doctrine of contributory infringement. Recently, the Supreme Court has extended the patent law doctrines of contributory infringement and inducement of infringement in paragraphs (b) and (c) of [section] 271 to copyright law. (5)
Section II of this Article traces the development of the doctrine of contributory infringement in the early federal cases. Section III describes how the doctrine of contributory infringement was used with tying arrangements and how this use led to the enactment of the Clayton Act. Section IV outlines the development of the doctrine of patent misuse and how it eventually undermined the doctrine of contributory infringement. Section V describes the enactment of 35 U.S.C. [section] 271 to codify the doctrine of contributory infringement. Section VI examines a number of cases decided by the Supreme Court and the Court of Appeals for the Federal Circuit that have interpreted [section] 271. Finally, Section VII discusses the Supreme Court cases that have extended [section] 271 to copyright law. …