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Contributory Infringement

Posted Tuesday, April 2, 2013 by Mike Cicero

Contributory Infringement is a theory of indirect infringement under which a party may be held liable if it has contributed to the direct infringement of a patent claim by another. More particularly, the statute providing for contributory infringement is 35 U.S.C. §271© which enables one to hold the supplier of a particular component liable for contributory infringement if the component (1) “constitute[es] a material part of the invention”; (2) the supplier knew of the fact that the component “was especially made or adapted for use in an infringement of such patent”; (3) the component is not a staple article, and (4) the component was used to commit at least one act of direct infringement. Additionally, defendant supplier’s conduct need occur within United States.

A strong limitation on contributory infringement is that the component supplied by the contributory infringer must constitute a material part of the invention. This requirement requires a close and strong relationship between the claimed invention and the component supplied. Thus, it is highly unlikely that a component which is outside the scope of the actual claim elements will lead to liability.

Regarding the knowledge requirement, the Supreme Court held in Aro Mfg. Co. v. Convertible Top Replacement Co., that the defendant needs to possess specific knowledge that the component which it is selling is specifically designed for a device that infringes a particular identified patent. 377 U.S. 476 (1964). This too can be a difficult requirement for the patentee to establish. Perhaps, an efficient way to meet this requirement would be to mail, in certified mail, a cease and desist letter containing all of the relevant information.

As far as showing that the component is “not a staple article or commodity of commerce suitable for substantial noninfringing use,” an easy example would be that a supplier will not be held liable for supplying standard off the shelf components. For example, supplying standard sizes screws to an entity that uses them in an infringing manner will not satisfy this element because standard screws have numerous noninfringing uses. However, supplying a unique fastener that can only be used with a patented product is more likely to satisfy this element because the unique fastener is not a staple item and lacks substantial noninfringing uses.

Finally, the patentee must show that direct infringement has in fact occurred, typically by someone other than the alleged contributory infringer. The patentee may make this showing with either direct evidence, e.g. evidence of a specific infringing act, or by circumstantial evidence, e.g. evidence that the infringement will necessarily occur some of the time under specific circumstances. Importantly, the First Sale Doctrine applies to this element, Thus, selling replacement parts to repair a patented invention to customers who purchased the product from the patent holder, and therefore exhausted the patent owner’s rights as to that specific article, will not give right to liability under contributory infringement because the customers do not infringe by repairing the product.

Ruttler Mills PLLC
One Union Square, 1730, 600 University Street, Seattle, Washington 98101 US
47.6097570-122.3321200
Phone: (206) 838-6400

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