Friday, 5 April 2013

Fordham session on indirect and contributory patent infringement

This year's Fordham IP Conference devoted a session to indirect and contributory patent infringement, moderated by Bristows' Myles Jelf.  First to speak was Wendy Miller (Cooper & Dunham), who explained the historical and legislative background to the current provisions of US law as stated in 35 USC s.271. Wendy discussed the Akamai ruling (noted on PatLit here), BMC Resources (ditto) and McKesson. asking whether -- in holding the 'mastermind' responsible for infringing acts committed by others -- the courts have actually changed the law or merely stated what it was.

Next to speak was Trevor Cook (Bird & Bird), who said that Europe lives in a post-Akamai world in which one does not need to identify a single specific infringer. The relevant law on inducing patent infringements by others can be found in section 60(2) of the Patents Act 1977.  This provision, based on Article 26 of the Community Patent Convention, has its counterpart in the legislation of countries elsewhere in Europe too but is clawed back somewhat by section 60(3) where the secondary infringement is no more than the supply of staple products that enable infringement to take place. Trevor discussed the knowledge and intention of such a supplier in the Grimme and KCI Licensing rulings, liability for skinny labelling and contributory infringement via supplying replacement parts in the recent UK Supreme Court decision of Schutz v Werit.

There then followed an enjoyable and stimulating discussion, mainly embracing a wide range of technical issues under US patent law.

1 comment:

Suleman said...

I think situations like Akamai are interesting in how practitioners are shocked by the Courts finding 'new' ways for claims to be infringed. I find that too often we draft cases and give advice based on an assumption of case law being static, when I think in patents it evolves at a high rate. I know its difficult to factor in possible future changes to case law, but too many patent attorneys seem blind to the possibility in their day to day work.