contributory infringement

The US Supreme Court has ruled that liability for inducing infringement of a patent under US law requires knowledge of the patent or something called ‘wilful blindness’ to the patent’s existence.

Patently-O summarises and includes a link to download Global-Tech Appliances, inc. v. SEB S.A.

Now, I do know that their law is different to our law.

For a start, under our law infringement can lie in ‘authorising’ the infringer, not (just) inducing the infringement or that idea of contributory infringement – the patentee’s exclusive rights under s 13 include the right to authorise someone to exploit the patent as well as to exploit the patent.

In Ramset, the Full Court traced the old case law: you couldn’t be liable for ‘merely facilitating’ someone else to infringe by supplying materials to them, even if you knew they were going to use them to infringe. If your involvement was sufficient to amount to a common design, or procuring their infringement, however, which generally seemed to presuppose some knowledge of the patent – you could be liable.

Ramset itself knew of the patent’s existence in 1987, several years before it issued the brochure with instructions on how to assemble its product and use it in a way that infringed.

But, on general principles, liability for authorisation requires two elements: (1) that someone has done something which infringes the patent (or threatens to do so in a quia timet case) and (2) the alleged authoriser has done something, or may be supplied something, to entice (to use yet another synonym), induce, persuade or encourage the first person to do that infringing conduct.

The first person, the primary infringer, can be liable even if they do not know that there is a patent – they might escape liability for damages or an account in view of their innocence: see s 123. Why shouldn’t that also apply to the alleged authoriser. Indeed, s 123 would seem equally applicable to the alleged authoriser. And that indeed is the position that Bennett J has reached in Inverness Medical Switzerland GmbH v MDS Diagnostics Pty Ltd [2010] FCA 108, for example.

The copyright cases on authorisation go so far as to hold that, at least in some circumstances, a person who stands by with knowledge that infringing conduct is occurring, or may be is likely to occur, will be liable as an authoriser where they have power to do something about it. Perhaps, we’ll get a better understanding of what is the quality of that power to do something if the High Court grants special leave to Roadshow in the iiNet case.