## Facts

- DSU Medical Corporation and Medisystems Corporation owned patents covering a guarded, winged-needle assembly intended to reduce needle-stick injuries.
- ITL Corporation manufactured abroad a needle-guard component (“Platypus”) that did not include a needle.
- ITL sold the guard components to JMS in Japan; JMS assembled the guards with needles, imported the completed needle sets into the United States, and sold them through JMS North America.
- DSU sued JMS, JMS North America, and ITL for direct infringement, induced infringement under 35 U.S.C. § 271(b), and contributory infringement under 35 U.S.C. § 271(c).
- A central claim-construction dispute concerned whether certain claims required a guard that enclosed a needle assembly with a needle present, as opposed to a stand-alone guard component.
- After a jury trial, some asserted claims were found obvious; other claims were found infringed by JMS/JMS North America with damages awarded; ITL was found not liable for infringement, inducement, or contributory infringement.

## Issues

1. Whether substantial evidence supported findings of direct infringement and contributory infringement by JMS/JMS North America based on imported and sold assembled needle sets.
2. Whether ITL, as a foreign manufacturer and seller of a component, was liable for contributory infringement under § 271(c) or inducement under § 271(b).
3. What mental state is required for inducement under § 271(b): whether intent to sell a product that results in infringement is sufficient, or whether knowledge of the patent and specific intent to cause infringement is required.
4. Whether substantial evidence supported the jury’s verdict that certain asserted claims were invalid as obvious.

## Decision

- The Federal Circuit (en banc on the § 271(b) standard) affirmed the judgment in all respects.
- The court affirmed that JMS/JMS North America directly infringed certain asserted claims and upheld the damages award.
- The court affirmed the judgment that ITL was not liable for direct infringement, contributory infringement, or inducement.
- The court affirmed the jury’s obviousness findings as to certain claims.

## Legal Principles

- Inducement under 35 U.S.C. § 271(b) requires proof that the accused inducer (1) knew of the patent, (2) knew that the induced acts constituted infringement (or was willfully blind), and (3) acted with specific intent to encourage another’s infringement; intent to sell a product is insufficient.
- Liability for inducement and contributory infringement requires an underlying act of direct infringement.
- Contributory infringement under 35 U.S.C. § 271(c) requires a component especially made or adapted for use in an infringing combination, knowledge of that infringing use, and the absence of substantial noninfringing uses.
- Foreign manufacture and foreign sales of components, without statutorily sufficient ties to infringing acts in the United States, do not by themselves establish U.S. patent infringement liability.

## Conclusion

The Federal Circuit affirmed findings that JMS/JMS North America infringed certain guarded-needle claims while other claims were invalid for obviousness, and it clarified en banc that § 271(b) inducement demands knowledge that the encouraged acts infringe and specific intent to cause that infringement, which DSU failed to prove against the foreign component supplier ITL.


DSU Med. Corp. v. JMS Co., 471 F.3d 1293 (Fed. Cir. 2006)