Inducing Infringement: Specific Intent and Damages Calculation

Andrew Ward, Incoming Associate at Winston & Strawn, LLP

Abstract

This Comment examines recent developments in the area of inducement of patent infringement. Specifically, the Comment addresses the specific intent required for inducement liability to attach and questions relevant to inducement damages calculations. With respect to intent, there has never been, nor is there now unfortunately, clear resolution regarding the intent required to induce patent infringement. Should intent to induce acts that happen to cause patent infringement be enough or must the inducer actually intend to induce patent infringements? The Supreme Court recently determined that the latter intent was most appropriate, but also explained that such intent may be shown through willful blindness. With respect to damages, there are significant proof issues. Specifically, patent infringement damages are typically based on the number of infringing acts. An inducer is liable for the underlying direct infringements, but how can those infringements be proven? For example, if only one small function of a large software program infringes a patent, then how does the patentee prove how many software users carried out the patented function? The Federal Circuit has laid out some guidance. This Comment provides a practical analysis of this guidance and offers advice to practitioners in proving (or refuting) inducement damages.