In a recent decision in the US (Riverbed Technology, Inc. v. Silver Peak Systems, Inc.), a company was found liable for indirect patent infringement even though the infringing features of its product were disabled when the product was sold. In the post-sale period, customers enabled the infringing features.  This was enough for the court to find the company liable for indirect infringement.

This case arose between two rivals in the wide area network market - Riverbed and Silver Peak. Riverbed sued Silver Peak for infringement of a number of US patents. Silver Peak counterclaimed, alleging infringement of three US patents. A jury trial eventually returned a verdict in favour of Silver Peak. Silver Peak asserted indirect infringement against Riverbed with respect to two patents. Specifically, the jury concluded that Riverbed “contributorily infringed” one of the patents and “induced infringement” of the other.

Riverbed challenged these conclusions, arguing that there was insufficient evidence of customer use of the accused features in the United States. Riverbed pointed out that the feature of its product that was allegedly infringing - a feature known as SDR-Adaptive - was disabled before the product was sold to consumers in the US. No-one disputed that fact. However, through user forums on the Riverbed website, as well as product manuals issued by Riverbed, consumers were taught how to enable and use this feature.

The court reviewed this surrounding evidence and concluded: “In sum, Silver Peak has offered evidence of Riverbed’s high sales volume, an instruction manual describing how to activate SDR-A, and several blog entries on Riverbed’s U.S. support forum from people who used their Riverbed devices with SDR-A enabled. Taken together, this circumstantial evidence is sufficient…” Riverbed was found to have indirectly infringed the Silver Peak patents.

Lessons for business? Canadian companies selling into the US should be aware that sales of their products may form the basis for liability in the US if used by customers in the US in infringing ways.