Divided Patent Infringement and Inducement: Protecting IP Rights and Allocating Liability

Description

The Federal Circuit's decision in Eli Lilly & Co. v. Teva Parenteral Medicines, 845 F.3d 1357 (Fed. Cir. 2017) establishes how Akamai’s divided infringement test applies to claims of induced infringement. Ensuing cases have shed further light on the application of Akamai’s divided infringement standard. In Travel Sentry Inc. v. Tropp, 877 F.3d 1370 (Fed. Cir. 2017), the Court held a defendant liable for the acts of a third party when the third party “hop[ed] to obtain access to certain benefits” but could do so only by performing certain steps identified by the defendant, and under the defendant’s prescribed terms.

Since Travel Sentry, the Court has continued to clarify the standard for divided infringement in Nalco Co. v. Chem-Mod, LLC, 883 F.3d 1337 (Fed. Cir. 2018) and induced infringement in Sanofi v. Watson Labs. Inc., 875 F.3d 636 (Fed. Cir. 2017), Vanda Pharm., Inc. v. West-Ward Pharm. Int’l Ltd., 887 F.3d 1117 (Fed. Cir. 2018), and HZNP Meds. LLC v. Actavis Labs. UT, Inc., 940 F.3d 680 (Fed. Cir. 2019).

As the landscape of divided and induced infringement continues to evolve, practitioners counseling clients must fully grasp the Federal Circuit's stance on culpability for actively performing steps of a claimed method or inducing others to do so. In the pharmaceutical/Hatch-Waxman context, the presence of the FDA-approved label and the proposed generic label give rise to additional considerations.

The panel will analyze Supreme Court cases setting the standard for proving the required knowledge for induced infringement, such as Commil USA, LLC v. Cisco Sys., Inc., 135 S. Ct. 1920 (2015) and Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754 (2011). The panel will also explore the Federal Circuit’s recent treatment of those cases in Omega Patents, LLC v. CalAmp Corp., 920 F.3d 1337 (Fed. Cir. 2019).

Practitioners must arm themselves with litigation strategies to assert or defend against direct and induced infringement. Our panel will guide counsel on handling divided infringement claims when enforcing patent rights. The panel will review recent court decisions and outline steps to protect IP rights and allocate liability in the event of an infringement.