Edited by Gregory J. Battersby
and Charles W. Grimes Litigator
VOLUME 21 NUMBER 1
JANUARY/FEBRUARY 2015 I P L i t i g a t o r 1
Paul Ragusa is a partner and Julie Albert is an
associate at Baker Botts, LLP in New York,
NY, where they practice intellectual property law
including litigation, licensing, and counseling.
In Global-Tech Appliances, Inc. v. SEB S.A., the
Supreme Court reviewed and clarified the standard for
induced patent infringement by endorsing the so-called
willful blindness doctrine.1 Rather than establishing that
an alleged inducer had actual knowledge of a patent,
proof that the party was willfully blind to the fact can
be sufficient. According to Global-Tech, to be willfully
blind, “(1) the defendant must subjectively believe that
there is a high probability that a fact exists and (2) the
defendant must take deliberate actions to avoid learning
of that fact.”2 Practical suggestions for applying the willful
blindness doctrine in view of Federal Circuit cases
addressing Global-Tech are discussed below.
Background: Global-Tech v.
In Global-Tech, the induced infringement claim centered
on the alleged infringement of SEB’s patented “cooltouch”
deep fryers by Pentalpha, a wholly owned subsidiary
of Global-Tech. Pentalpha purchased SEB’s fryers in
Hong Kong, and developed its own models by copying all
but the product’s cosmetic features. Pentalpha obtained a
patent clearance opinion from an attorney, but failed to
notify the attorney that the product was a direct copy of
the SEB fryer. Without this information, the attorney did
not locate SEB’s patent, and concluded that Pentalpha’s
design did not infringe any identified patents. Pentalpha
then sold its fryers to Sunbeam for resale in the United
States. SEB sued Sunbeam for patent infringement,
resulting in settlement, and despite receiving notice of
the suit, Pentalpha continued to manufacture infringing
fryers for other entities. SEB subsequently brought suit
against Pentalpha for induced infringement, resulting in
a jury verdict for SEB. Although Pentalpha lacked actual
knowledge of SEB’s patent, the Federal Circuit upheld
the jury’s finding of induced infringement on the basis
of Pentalpha’s “deliberate indifference” to a known risk.3
On appeal, the Supreme Court affirmed the jury verdict
and found Pentalpha’s conduct to constitute induced
infringement, but rejected the Federal Circuit’s “deliberate
indifference” standard on the basis that it allows “a finding
of knowledge where there is merely a ‘known risk’ that the
induced acts are infringing” and “does not require active
efforts by the inducer to avoid knowing about the infringing
nature of the activities.”4 Rather, the Supreme Court
held that a finding of “willful blindness” could be used
in lieu of actual knowledge, and found that Pentalpha’s
actions—specifically, its direct copying of the SEB fryers,
the choice to copy an overseas model that did not include
US patent markings, and its failure to notify its attorney
of the copying—demonstrated willful blindness.5
Notably, the Global-Tech Court only addressed willful
blindness in the context of the first prong of induced
infringement—knowledge of the patent-in-suit.6 In
response to Pentalpha’s argument “that § 271(b) demands
more than willful blindness with respect to the induced
acts that constitute infringement”, the Court stated that
“[t]here is no need to invoke the doctrine of willful blindness
to establish that Pentalpha knew that the retailers
who purchased its fryer were selling that product in the
American market; Pentalpha was indisputably aware that
its customers were selling its product in this country.”7
However, lower courts subsequently have applied the
willful blindness doctrine to both knowledge elements of
Practical Application of the
Willful Blindness Doctrine
When applying the Supreme Court’s willful blindness
standard, lower courts have considered a number of
factors, including alleged inducer’s knowledge, conduct,
and competitive proximity to the patentee to determine
whether or not it has induced infringement. The more
commonly addressed factors are addressed in turn.
Navigating Induced Infringement
Claims: A Practical Application
of the Willful Blindness Doctrine
Paul Ragusa and Julie Albert
2 I P L i t i g a t o r JANUARY/FEBRUARY 2015
Knowledge of the Patent-in-Suit
or Related Patents
An alleged inducer’s knowledge of the asserted patent
prior to litigation can be an important factor in willful
blindness analysis. In Smith & Nephew, Inc. v. Arthrex,
Inc.,8 the Federal Circuit overturned a lower court’s
grant of judgment as a matter of law that the defendant
did not induce infringement based, in part, on willful
infringement. In this case, key Arthrex executives knew
of the asserted method and apparatus patent before any
infringement took place, and with that knowledge, created
a product and drafted instructions for its use that
mirrored the steps of the method patent. After trial, the
defendant argued that its testimony illustrated its lack
of the “requisite knowledge of infringement”, but the
Federal Circuit ultimately upheld the jury’s verdict.9
However, a patentee’s broad assertion of its patent rights,
or the accused inducer’s knowledge of some of an entity’s
patents but not the patent on which the infringement
claim is based, may not be sufficient to support a willful
blindness determination, or even to survive a motion to
dismiss.10 Additionally, knowledge of the asserted patent
meets only the first prong of the willful blindness test; even
where pre-litigation knowledge has been found, the fact
finder also must evaluate whether the alleged inducer took
affirmative steps to avoid knowledge of infringement.11
Conduct of the Alleged
Direct Copying. As discussed above, Pentalpha directly
copied the fryers at issue in Global-Tech. The Supreme
Court found that this intentional copying of SEB’s fryers,
as well as the less-than-wholesome circumstances
surrounding Pentalpha’s decision to copy the fryers
and withhold this information from its attorney, was
sufficient to demonstrate Pentalpha’s knowledge of the
patents, and to support a finding of willful blindness.12
Marketing Activities by the Alleged Inducer. Even when
an alleged inducer knows of the patent-in-suit, “[a]llegations
of the marketing activities of the Defendants do
not, on their own, demonstrate that Defendants knew
such activities were infringing or that Defendants possessed
the specific intent to encourage another’s infringement.”
13 In ReefEdge Networks, LLC v. Juniper Networks,
Inc., Juniper Networks alleged that ReefEdge’s advertising
provision of technical support services for allegedly
infringing products constituted inducement. The District
Court of Delaware disagreed, stating “marketing activities
are not sufficient to constitute induced infringement
unless the marketing activities are coupled with actual
knowledge of the patents-in-suit and awareness that the
accused products infringe the patent-in-suit.”14
Clearance and Monitoring Activities. An alleged inducer’s
pre-infringement actions may be important to understand
the second prong of the willful infringement
analysis: Whether the defendant has taken deliberate
actions to avoid knowledge of the patent-in-suit. In
Minemyer v. R-Boc Representatives, Inc., willful blindness
was found where, rather than seeking an attorney’s
opinion, the alleged inducer relied on a third party’s
statement that its conduct did not constitute induced
infringement.15 Additionally, the Minemyer defendants
provided no evidence that such a conversation took place
beyond the defendant’s testimony at trial.16 In Global-
Tech, the Court placed weight on Pentalpha’s failure to
notify its attorney that the fryer had been copied before
soliciting the attorney’s opinion.17
Similarly, the existence of a patent monitoring program
can impact willful blindness analysis, but may cut both
ways: such a program makes knowledge more likely, but
also can weigh against a finding that an alleged inducer
deliberately acted to avoid knowledge. In MONEC
Holding, the alleged inducers “monitored the litigation
activities of their competitors”, and a court in Delaware
found such conduct to negate any claims of willful blindness.
18 The lack of a patent monitoring program may
not be probative of willful blindness. Rather, a Delaware
court has found that by failing to implement a patent
monitoring program, an alleged inducer was not willfully
blind, but “[a]t best … reckless or negligent.”19
Market Size and Competitive
The question of whether the parties are in a competitive
relationship can have some bearing on a finding of
willful blindness. A company may be more likely to know
about the patents owned by its competitors than those
owned by an entirely unrelated company, and at least
one court has imputed knowledge of its competitor’s
patents to the alleged inducer for the purposes of summary
judgment when, among other things, the defendant
was aware of products that bore the patent number.20
However, another court has deemed this rationale to be
“too speculative”21 on its own, and a recent case found
the plaintiff’s evidence of the “small and highly competitive
nature of the relevant market” insufficient to support
a finding of willful blindness.22
Jurisprudence around induced infringement is evolving
constantly, and courts will continue to weigh in
on the nature and amount of evidence necessary to
support or defend against a claim of induced patent
1. Global-Tech Appliances, Inc. v. SEB S.A., 131 S.Ct. 2060, 2068 (2011).
2. Id. at 2070.
3. SEB S.A. v. Montgomery Ward & Co., Inc., 594 F.3d 1360, 1376 (Fed. Cir.
4. Global-Tech, 131 S. Ct. at 2071.
5. Id. at 2071–2072.
6. A claim for induced infringement requires two separate findings: (1) knowledge
of the patent-in-suit; and (2) knowledge that the induced activities
constitute direct patent infringement.
7. Id. at 2070.
8. Smith & Nephew, Inc. v. Arthrex, Inc., 502 F. App’x 945 (Fed. Cir. 2013).
9. Id. at 950 (finding knowledge of patent and knowledge that induced acts
constitute patent infringement sufficient to support jury’s finding of induced
10. See IpVenture Inc. v. Lenovo Grp. Ltd., No. 1:11-cv-00588-RGA (D.Del.
Jan 8, 2013), Mem. Order at *1–2 (finding general assertions of ownerships
of patents in “’559 patent family” and other indirect support, including news
articles and press releases, to be “at best, tenuous” and insufficient to survive
a motion to dismiss plaintiff’s allegations of willful blindness to ’559 patent
specifically); Toshiba Corp. v. Imation Corp., No. 3:09-cv-305-SLC (W.D.
Wis. Apr. 22, 2014), Op. and Order at 42 (stating that notice letter containing
information of patent portfolio containing 360 patents, including the patentin-
suit, was not enough to support a finding of willful blindness).
11. See Illinois Tool Works v. MOC Products Co., Inc., 856 F. Supp. 2d 1156,
1168 (S.D. Cal. 2012), Order Denying Pl.’s Mot. for Summ. J. on Inducement
of Infringement (finding that where an employee of the accused inducer was
a named inventor of the patent-in-suit and unquestionably knew of the patent,
the employee’s knowledge could also be indicative of his ability to design
a non-infringing product).
12. See Global-Tech, 131 S. Ct. at 2071–2072.
13. MONEC Holding AG v. Motorola Mobility, Inc., 897 F. Supp. 2d 225, 234
(D. Del. 2012).
14. ReefEdge, No. 13-412-LPS, 2014 WL 1217263, at *3 (D. Del. Mar. 21 2014).
15. Minemyer, No. 1:07-cv-01763, 2012 WL 2155240 (N.D. Ill. Jun. 13, 2012),
Mem. Op. and Order at *15.
17. Global-Tech, 131 S. Ct. at 2071.
18. MONEC, 897 F. Supp. 2d at 231.
19. Apeldyn Corp. v. AU Optronics, 831 F. Supp. 2d 817, 831 (D. Del. 2011).
20. See Lutron Elecs. Co. v. Crestron Elecs. Co., 970 F. Supp. 2d 1229, 1238
(D. Utah 2013) (“Lutron was Crestron’s competitor. Emails show that
Crestron was aware of Lutron’s products and those products had the ’442
Patent marking on them. Moreover, industry publications reported on
two different lawsuits Lutron filed for infringement of the ’442 Patent. A
reasonable fact finder could infer from this evidence that Crestron engaged
in willful blindness if it did not have actual knowledge of the patent until
21. See, e.g., Pacing Techs., LLC v. Garmin Int’l, Inc., No. 3:12-cv-1067-BENJLB
(S.D. Cal. Feb. 5, 2013), Order Granting in Part Defs.’ Partial Mot. to
Dismiss at 3–4.
22. Helios Software, LLC v. SpectorSoft Corp., 2014 WL 4796111 at *13 (D.
Del. Sep. 18, 2014).
Copyright © 2015 CCH Incorporated. All Rights Reserved.
Reprinted from IP Litigator, January/February 2015, Volume 21, Number 1, pages 18–20,
with permission from Wolters Kluwer, New York, NY,