A Brief History of Indirect Liability for Patent Infringement

By Adams, Charles W. | Santa Clara Computer & High Technology Law Journal, March 2006 | Go to article overview

A Brief History of Indirect Liability for Patent Infringement


Adams, Charles W., Santa Clara Computer & High Technology Law Journal


ABSTRACT

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.

I. INTRODUCTION

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. …

The rest of this article is only available to active members of Questia

Already a member? Log in now.

Notes for this article

Add a new note
If you are trying to select text to create highlights or citations, remember that you must now click or tap on the first word, and then click or tap on the last word.
One moment ...
Default project is now your active project.
Project items

Items saved from this article

This article has been saved
Highlights (0)
Some of your highlights are legacy items.

Highlights saved before July 30, 2012 will not be displayed on their respective source pages.

You can easily re-create the highlights by opening the book page or article, selecting the text, and clicking “Highlight.”

Citations (0)
Some of your citations are legacy items.

Any citation created before July 30, 2012 will labeled as a “Cited page.” New citations will be saved as cited passages, pages or articles.

We also added the ability to view new citations from your projects or the book or article where you created them.

Notes (0)
Bookmarks (0)

You have no saved items from this article

Project items include:
  • Saved book/article
  • Highlights
  • Quotes/citations
  • Notes
  • Bookmarks
Notes
Cite this article

Cited article

Style
Citations are available only to our active members.
Buy instant access to cite pages or passages in MLA, APA and Chicago citation styles.

(Einhorn, 1992, p. 25)

(Einhorn 25)

1. Lois J. Einhorn, Abraham Lincoln, the Orator: Penetrating the Lincoln Legend (Westport, CT: Greenwood Press, 1992), 25, http://www.questia.com/read/27419298.

Cited article

A Brief History of Indirect Liability for Patent Infringement
Settings

Settings

Typeface
Text size Smaller Larger Reset View mode
Search within

Search within this article

Look up

Look up a word

  • Dictionary
  • Thesaurus
Please submit a word or phrase above.
Print this page

Print this page

Why can't I print more than one page at a time?

Help
Full screen

matching results for page

    Questia reader help

    How to highlight and cite specific passages

    1. Click or tap the first word you want to select.
    2. Click or tap the last word you want to select, and you’ll see everything in between get selected.
    3. You’ll then get a menu of options like creating a highlight or a citation from that passage of text.

    OK, got it!

    Cited passage

    Style
    Citations are available only to our active members.
    Buy instant access to cite pages or passages in MLA, APA and Chicago citation styles.

    "Portraying himself as an honest, ordinary person helped Lincoln identify with his audiences." (Einhorn, 1992, p. 25).

    "Portraying himself as an honest, ordinary person helped Lincoln identify with his audiences." (Einhorn 25)

    "Portraying himself as an honest, ordinary person helped Lincoln identify with his audiences."1

    1. Lois J. Einhorn, Abraham Lincoln, the Orator: Penetrating the Lincoln Legend (Westport, CT: Greenwood Press, 1992), 25, http://www.questia.com/read/27419298.

    Cited passage

    Thanks for trying Questia!

    Please continue trying out our research tools, but please note, full functionality is available only to our active members.

    Your work will be lost once you leave this Web page.

    Buy instant access to save your work.

    Already a member? Log in now.

    Oops!

    An unknown error has occurred. Please click the button below to reload the page. If the problem persists, please try again in a little while.