Patent Infringement as Criminal Conduct

Michigan Telecommunications and Technology Law Review, Dec 2012

Criminal and civil law differ greatly in their use of the element of intent. The purposes of intent in each legal system are tailored to effectuate very different goals. The Supreme Court's recent decision in Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011), however, imported a criminal concept of intent--willful blindness--into the statute for patent infringement, a civil offense. This importation of a criminal law concept of intent into the patent statute is novel and calls for examination. This Article compares the purposes behind intent in criminal law with the purposes behind intent in patent law to demonstrate that this importation does not achieve the policy goals of the patent regime. Criminal law jurisprudence requires an intent element for three reasons: to ascribe a level of moral blameworthiness to an act, to separate criminal from civil liability, and to shield otherwise innocently acting defendants from criminal punishment. Patent infringement actions, by contrast, lack an intent element because they almost exclusively seek to remedy economic harms. The importation of criminal concepts of knowledge into the patent infringement statute may therefore lead to unwanted consequences, particularly, higher-than-warranted burdens of proof for patent holders. To this end, equating criminal mental states to civil ones risks treating patent infringement as criminal conduct. This Article concludes by proposing that courts should examine the purposes of mental state requirements on a statute-by-statute basis.

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Patent Infringement as Criminal Conduct

Patent Infringement as Criminal Conduct Jacob S. Sherkow 0 1 0 This Articlesibrought to you for free and open access by the Journals at University of Michgian Law School Scholarship Repository. It has been accepted for inclusion in Michgian Telecommunications and Technology Law Review by an authorized editor of University of Michgian Law School Scholarship Repository. For more information , please 1 Part of theCriminal Law Commons , Intellectual Property Law Commons, and theSupreme Follow this and additional works at: http://repository.law.umich.edu/m ttlr Court of the United States Commons Recommended Citation Jacob S. Sherkow, Patent Infr ingement as Criminal Conduct, 19 Mich. Telecomm. & Tech. L. Rev. 1 (2012). Available at: http://repository.law.umich.edu/mttlr/vol19/iss1/1 Criminaland civil law differ greatly in their use of the element of in tent. The purposes of intent in each legal system are tailored to effectuate very different goals. The Supreme Court's recent decision in Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011), however importeda criminalconcept of intent-willful blindness-into the statutefor patent infringement, a civil offense. This importation of a criminal law concept of intent into the patent statute is novel and callsfor examination. This Article comparesthe purposes behind intent in criminal law with the purposes behind intent in patent law to demonstrate that this importation does not achieve the policy goals of the patent regime. Criminal law jurisprudence requires an intent element for three reasons:to ascribe a level of moral blameworthiness to an act, to separatecriminalfrom civil liability,and to shield otherwise innocently acting defendants from criminal punishment. Patent infringement actions, by contrast, lack an intent element because they almost exclusively seek to remedy economic harms. The importationof criminal concepts of knowledge into the patent infringement statute may therefore lead to unwanted consequences, particularly,higherthan-warrantedburdens of proof for patent holders. To this end, equating criminalmental states to civil ones risks treatingpatent infringement as criminal conduct. This Article concludes by proposing that courts should examine the purposes of mental state requirements on a statute-by-statutebasis. * LD., Michigan; M.A., Columbia (Biotechnology); B.Sc., McGill. Special thanks to Dave Fagundes, J.J. Prescott, and David L. Schwartz for their helpful insights. Thanks, too, to the Editors of the Michigan Telecommunicationsand Technology Law Review for their diligent work and detailed comments. And my heartfelt appreciation to Amanda E. Fein for her support, encouragement, and loving prodding to help me complete this Article. I CONCLUSION INTRODUCTION While "it is true enough that civil and criminal cases do not always stand in bold relief to one another,"' "[i]n no one thing does criminal jurisprudence differ more from civil . .. than in its different doctrine concerning ... intent."2 The terms used to describe criminal intent are "tailored to the criminal law ... to require a ... criminal intent beyond the purpose otherwise required for guilt, or an additional bad purpose, or specific intent to violate a known legal duty created by highly technical statutes."3 The terms used to describe intent in a civil violation "typically present[] neither the textual nor the substantive reasons for pegging the threshold of liability at knowledge of wrongdoing."' The Supreme Court's recent decision in Global-Tech Appliances, Inc. v. SEB S.A.' violates this longstanding separation between criminal and civil mental states. There, the Court imported a concept of willful blindness, a criminal law species of intent, into patent law, a solely civil field. 6 This importation continues a trend where "the distinction ted). between criminal and civil law seems to be collapsing across a broad front."' A comparison of the purposes behind the intent, or mens rea, requirement in criminal law with the infringement statute in patent law demonstrates that the Court's haste in Global-Tech may lead to unwanted consequences in patent infringement and other civil actions. Generally, patent infringement is a strict liability civil offense.' It does not matter whether the conduct of the alleged infringer was malicious or innocent of heart; the patent infringement statute imposes liability on all those who make, use, sell, or offer to sell a patented invention without the authority of the patent holder.9 In a typical action for patent infringement, the mental state of an accused infringer is irrelevant.'0 In a criminal action, however, the mental state of the defendant is allimportant. The Supreme Court has long presumed that "an injury can amount to a crime only when inflicted by intention."" Without some base level of criminal intent, a defendant cannot be held criminally liable for his conduct.'2 To color the appropriate mental state required for convi (...truncated)


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Jacob S. Sherkow. Patent Infringement as Criminal Conduct, Michigan Telecommunications and Technology Law Review, 2012, pp. 1-41, Volume 19, Issue 1,