Patent Infringement as Criminal Conduct
Patent Infringement as Criminal Conduct
Jacob S. Sherkow 0 1
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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)