Grokster cited in patent inducement case
The Federal Circuit cited the Grokster case today in a patent inducement ruling, MEMC Electronic Materials v. Mitsubishi Materials Silicon Corp,Download file. Dennis Crouch has the summary. We also note a recent copyright case citing Grokster, Monotype Imaging v. Bitstream, discussed below.
In MEMC, the Court concluded that a genuine issue of material fact exists in the case with respect to the patent inducement claim, and thus reversed the lower court's summary judgement decision:
"In light of the above evidence of record and viewing this evidence in the light most favorable to MEMC, we are not prepared to hold that a reasonable jury could not find intent to induce infringement."
The conduct in question includes "substantial" technical support in the form of email communications, shipment of wafers to address technical issues, and on-site visits involving technical presentations.
The court cites Grokster for the proposition that:
"Evidence of active steps taken to encourage direct infringement, such as advertising an infringing use or instructing how to engage in an infringing use, show an affirmative intent that the product be used to infringe."
However the citation leaves out the rest of the sentence, which continues:
"and a showing that infringement was encouraged overcomes the law's reluctance to find liability when a defendant merely sells a commercial product suitable for some lawful use".
The Court in Grokster also said:
"Nor would ordinary acts incident to product distribution, such as offering customers technical support or product updates, support liability in themselves."
Thus, while it would be folly to ignore the substantial differences between the nature of a patent and a copyright infringement action, and despite the fact that some in the patent bar may wish to disavow the Supreme Court's articulation of the intentional inducement doctrine, it looks like the "historic kinship" between patents and copyrights will continue in this context.
MEMC appears to be the third case citing Grokster to date. The other two cases are the 9th Circuit remand of Grokster to the district court on August 15th, and a decision of the Northern District of Illinois on July 12th. In Monotype Imaging v. Bitstream, Inc.,Download file, the district court distinguished Grokster and found no evidence of inducement. Monotype Imaging involved a contributory infringement claims over software that replicates typeface fonts.
“Here, the most that Plaintiffs can point to are Bitstream's repeated advertisements that its TrueDoc software could be used with any fonts and did not infringe upon intellectual property rights. As several Bitstream witnesses credibly explained, however, the statement that the software could be used with any fonts, referred to the fact that it could work with both Bitstream fonts, as well as fonts from other font distributors that had authorized the use of their fonts with TrueDoc. This differs substantially from the situation in Grokster where the defendants specifically targeted an audience that was seeking to download copyrighted material.”[citations omitted]
"Further, unlike in Grokster, . . . Bitstream submitted evidence that it had taken steps to avoid the use of its TrueDoc with protected fonts of other companies. Lastly, unlike in Grokster, there is no evidence in the record to show that Bitstream's business was benefited by increasing the number of infringing uses of TrueDoc. Instead, the record shows that it was not in Bitstream's business interests to increase any infringement of other parties' fonts using TrueDoc. Rather, by distributing TrueDoc along with Bitstream's own fonts, Bitstream sought to increase sales of its fonts. Accordingly, there is no evidence in the record that supports that Bitstream acted with the requisite intent to make it liable under Grokster's intentional inducement of infringement cause of action.”
Monotype Imaging was docketed for appeal last week,Download file, so we will look to see what the 7th Circuit has to say about this.
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