Queen Mary Journal of Intellectual Property

Having a patent department alone cannot constitute a specific intent to cause direct infringement under US patent law

Apeldyn Corp. v AU Optronics Corp., 522 F. App'x 912, 912 (Fed. Cir. 2013)

Ping-Hsun Chen *

Keywords: patent, active inducement, indirect infringement, patent infringement, willful-blindness standard, specific intent


The United States patent law imposes a liability on a person who actively induces others to infringe a patent. Infringement based on ‘active inducement’ requires an infringer to know the patent-in-suit. In 2008, Apeldyn Corp. (‘Apeldyn’) sued AU Optronics Corp. (‘AUO’) for patent infringement. In 2011, AUO filed a summary judgment motion and won the issue of active inducement. Apeldyn relied on a 2011 decision of the Supreme Court of United States, Global-Tech Appliances, Inc. v SEB S.A., to assert that AUO willfully blinded itself from knowing the patent-in-suit. Apeldyn asserted that AUO's patent department should have monitored competitors’ patents. However, the district court disagreed. Under Global-Tech Appliances, Inc., an infringer under active inducement must have a culpable mind to encourage or assist others to infringe a patent. Merely knowing a risk of patent infringement is not enough. So, the fact that AUO had a big patent department at most proves that AUO was reckless or negligent. The implication is that a company with a patent department does not have a duty to discover competitors’ patents that it might infringe. However, this implication is limited to a scenario where a company does not study competitors’ products.

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