direct infringement.

Under Section 271(a) of the US Patent Law, it is illegal to make, use, offer to sell, sell, or import into the US any device that makes use of a valid patent, without the authorization of the patent owner. Doing so constitutes a direct infringement.

It is not always clear what constitutes sales in the United States. In one case, a Japanese supplier sold products exclusively to a Japanese customer, but placed shipping labels on the products indicating a US destination and helped facilitate importation by the customer. However, a US court found that the supplier had no sales in the US.

However, in another case, the court found that a supplier made sales in the US despite delivering the products in Canada, because it sold to US customers. And in another case, the court ruled sales in the US despite delivery to Hong Kong, because the supplier manufactured the products with North American electrical accessories, placed US trademarks on the products, and indicated US destinations on invoices.

patented processes.

Even if a foreign-made product does not infringe any US patent, the foreign manufacturer may be liable under section 271(g) of the Patent Act if it manufactured the device using a US-patented process. However, US courts hold liability under section 271(g) unless the goods are ultimately sold in the US.

active induction.

In addition to direct infringement and use of a patented process, section 271(b) of the Patents Act states that “whoever actively induces infringement of a patent shall be liable as an infringer”. Induction requires both (i) intent to cause infringement and (ii) affirmative acts to encourage infringement, such as advertising infringing use or instructing how to engage in infringing use.

In proving intent to cause a violation, circumstantial evidence may be sufficient, including evidence that no investigation was made, alternative design solutions were not explored, corrective action was taken, or legal advice was sought. However, courts have refused to find inducement liability where a product, despite having potentially infringing uses, is also capable of non-infringing uses.

In one case, the US Federal Circuit held that the required proof of intent necessarily requires proof that the defendant knew of the patent. But the Supreme Court held in another case that “deliberate blindness” to known risks may be sufficient to satisfy the knowledge requirement. However, the seller’s conduct in that case was especially egregious.

tax offense.

Finally, on a related matter, a seller may be liable under section 271(c) of the Patent Law, even if they never make or sell an infringing product, knowingly sell, offer to sell, or import into the US. a device specially manufactured or adapted for use in an infringing product.

Section 271(c) includes an exemption for basic items of commerce capable of substantial noninfringing use, but such use must be more than occasional, implausible, impractical, experimental, or hypothetical. In addition, to establish liability for a tax violation, the plaintiff must also prove the direct violation of a third party, such as the seller’s customer.

Of course, when bringing a claim against a foreign entity, the US patentee must overcome potential hurdles related to jurisdiction, venue, service of process, evidence, and ultimately whether is successful, the cross-border enforcement of the award. However, the fact that a foreign manufacturer or supplier never does business in the US may not be a bar to liability under US Patent Law.