Joshua Miller IEOR 190G Spring 2009 UC Berkeley College of Engineering 3/30/2009 DSU Medical Corp. v. JMS Co. December 13, 2006 Patent No. 5,112,311 (“the ‘311 patent”) Claims a guarded, winged-needle assembly which guards standard winged-needle-sets to prevent needle-stick injuries.  Contributory Infringement  Inducement of Infringement

“311” DSU’s medical device Guarded, winged-needle assembly. Used to prevent needle sticks.

Claims Claim 1: requires “a guard slidably enclosing a sliding assembly comprising a needle and a winged needle hub” –Trial Court decides that this requires the guard to substantially contain the needle assembly at all times  For direct infringement one needs a needle and guard where needle is substantially within the guard.

Accused Device Australian company ITL’s “Platypus”: sold to JMS Sold in open-shell configuration by JMS in US

DSU Takes Action DSU sues JMS for direct infringement DSU sues ITL for induced infringement District Court rules that JMS directly and indirectly infringes No direct or indirect infringement by ITL because ITL sells the guard opened and without the needle assembly inside

Infringement Direct Infringement Indirect Infringement Induced Infringement Liable by actively and knowingly aiding and abetting another's direct infringement of the patent. Contributory Infringement Liable if one supplies a component or material especially adapted for infringing use.

Induced Infringement –Act & Intent Direct Infringement

Contributory Infringement ITL’s Contributory activities occurred outside of US  No contributory infringement by ITL because: “[t]he record does not show that the Platypus guards ITL shipped into the United States in the open-shell configuration were ever put into an infringing configuration, i.e., closed-shell”

Pre-DSU (Hewlett-Packard Co. v. Bausch & Lomb Inc.,) No Knowledge of Patent Required Post-DSU (Manville Sales Corp. v. Paramount Systems, Inc.) Inducer must now know of the patent. Mere knowledge of possible infringement or underlying acts (alleged to constitute infringement) is no longer sufficient. Induced Infringement

Outcome Jury awards $5,055,211 to DSU for JMS’ infringement A defendant must intend to cause infringement of the patent, rather than simply intend to cause the acts which happen to infringe

The Rule Is Clarified “ Inducement requires evidence of culpable conduct, directed to encouraging another’s infringement, not merely that the inducer had knowledge of the direct infringer’s activities.” This decision likely will make it more difficult to enforce patents against parties who do not directly infringe.

Implications of DSU vs. JMS How to defend against inducement charges? –A good faith belief based on an objectively reasonable opinion of counsel of no direct infringement can provide a defense to a charge of inducing infringement Burden of proving inducement substantially increases

Cont… Competent Opinions of Counsel – important to negating allegations of intent to infringe prong Leads to a dilemma regarding opinions of counsel

References =5,112,311http:// =5,112, /FederalCircuitPatentWatch_ _DSU.pdfhttp:// /FederalCircuitPatentWatch_ _DSU.pdf