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Can you infringe a patent without making, using, or selling the whole invention, but just a piece of it? It is possible under a doctrine referred to as “contributory infringement.”

To demonstrate an example, let us suppose the patented invention is the “robot” created from toy bricks in the picture below. The claims in our hypothetical patent include the following components:

(1) legs;

(2) a square brick midsection;

(3) curved arms with gripping members;

(4) an axle head;

(5) a pyramid hat; and

(6) a detachable “vision bracket.” 

The question at hand is whether one could sell or import just one component of this robot and be liable for patent infringement.

Under 35 U.S.C. § 271(c), restriction on sale or importation of a component of the claimed robot may apply where that component is known to be “especially made or especially adapted for use” in an infringement of the patent, and “not a staple article or commodity of commerce suitable for substantial noninfringing use.”

The midsection of this patented robot is made from a square yellow brick (see below), which is rather generic-looking and could be used to build just about anything. That is an example of a component suitable for “substantial noninfringing use” and not “especially made” for the patented robot. Patent law does not seek to withdraw staple articles from commerce just because they may have been incorporated into a patented invention.

Let us assume for this exercise that the gray “vision bracket”, above, is unique to this robot and has no other uses. This component is an example of something “especially made or especially adapted for use” in an infringement of the patent (it was designed to give the robot vision), and is “not a staple article or commodity of commerce suitable for substantial noninfringing use” (i.e., it cannot be legitimately used for anything but the patented robot). Selling or importing this “vision bracket” could then constitute contributory patent infringement under certain additional circumstances.

Specifically, the seller or importer of the vision bracket component must (1) have knowledge of the patent and (2) have knowledge that the vision bracket will be used in an infringement of that patent. In addition, for the seller or importer to be liable for contributory infringement, there must be a direct infringer – someone who is making, using, selling, offering to sell, or importing the entire patented robot in the United States. One cannot “contribute” to infringement if no actual infringement is taking place. If someone sells vision brackets to others who just put them on a shelf, no one is actually taking advantage of the invention, which is the robot itself.

Why would a patent owner pursue a contributory infringer rather than a direct infringer?  Below are some examples where this would make sense.

(1) The contributory infringer is selling low volumes to a high number of one-time direct infringers – It does not often make financial sense to sue direct infringers who make, use, or sell just a single infringing device. For example, if the contributory infringer is selling to individual end users who assemble their own infringing robots, it would be prohibitively expensive and a potential logistical problem to pursue each one individually. Filing against a single contributory infringer in this case would be a more efficient process.

(2) The direct infringer is a customer of the patent owner – Suing one’s own customer is undesirable where the business relationship is ongoing. In circumstances where a customer is directly infringing by purchasing components from a contributory infringer, it is often better to sue the contributory infringer as a way to avoid direct confrontation with the customer.

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