Vita-Mix Corp. v. Basic Holding, Inc.
92 U.S.P.Q. 2d (BNA) 1340, 581 F.3d 1317, 2009 U.S. App. LEXIS 20622 (2009)
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Rule of Law:
The sale of a product that is capable of a substantial non-infringing use does not constitute contributory infringement, even if the product can also be used in an infringing manner. Direct infringement can be established through circumstantial evidence without direct observation of the infringing act.
Facts:
- Vita-Mix Corporation holds U.S. Patent No. 5,302,021 for a method of preventing air pockets in a blender by positioning a plunger above rotating blades without touching the pitcher.
- Vita-Mix markets blenders, including the VITA-MIX® 5000, which utilize this patented method.
- Basic Holding began marketing a line of blenders, including the Blender Solutions™ 5000, which came with a 'stir stick' that could be inserted into the blender.
- Basic's blenders included features specifically designed for active stirring, such as a ball-and-socket joint for the stir stick, a rubber o-ring on the stick's end, and interrupted ribbing inside the pitcher.
- Users of Basic's blenders could either let the stir stick sit passively above the blades (a potentially infringing use) or actively stir the contents, making contact with the pitcher's sides (a non-infringing use).
- Basic's employee, Dale Oldroyd, tested multiple blenders at once, sometimes letting them run with stir sticks inserted but not actively stirred.
- Basic's spokesman, Tom Daniels, demonstrated a blender on QVC, during which the blender ran for 26 seconds with the stir stick inserted but not being stirred.
Procedural Posture:
- Vita-Mix Corporation sued Basic Holdings, Inc. and its parent companies in the U.S. District Court for the Northern District of Ohio for patent and trademark infringement.
- Basic filed counterclaims of non-infringement, invalidity of the patent, and unenforceability.
- The district court conducted a Markman hearing to construe the patent's claims.
- Both parties filed cross-motions for summary judgment.
- The district court granted summary judgment in favor of Basic, finding no direct, contributory, induced, or trademark infringement.
- The district court also granted summary judgment in favor of Vita-Mix on Basic's counterclaims of invalidity, inequitable conduct, and laches.
- Vita-Mix appealed the district court's infringement rulings to the U.S. Court of Appeals for the Federal Circuit.
- Basic filed a conditional cross-appeal of the rulings on its invalidity and unenforceability counterclaims.
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Issue:
Does the sale of a product capable of both infringing and substantial non-infringing uses constitute contributory infringement under 35 U.S.C. § 271(c)?
Opinions:
Majority - Prost, J.
No, the sale of a product with substantial non-infringing uses does not constitute contributory infringement. The court affirmed the summary judgment of no contributory infringement because Basic's blenders had substantial non-infringing uses. A non-infringing use is 'substantial' if it is not 'unusual, farfetched, illusory, impractical, occasional, aberrant, or experimental.' Here, the blenders' design features (ball-and-socket joint, o-ring) were specifically for stirring, making it a substantial, not merely theoretical, non-infringing use. For inducement, the court found no evidence of Basic's specific intent to encourage infringement; Basic's instructions taught stirring, and its later instructions were even clearer about non-infringing use. However, the court vacated the summary judgment of no direct infringement, holding that direct proof is not required and that circumstantial evidence—like expert testimony combined with evidence of how the blenders were used by Basic's employees and customers—was sufficient to create a genuine issue of material fact for trial. The court also affirmed no trademark infringement, finding that the number '5000' was used by both parties as a grade or model designator, not a source-identifying trademark.
Dissenting - Bryson, J.
Yes, there was sufficient evidence of contributory infringement and inducement to survive summary judgment. The dissent argues that the key question is not whether a non-infringing use is merely possible, but whether an ordinary user would operate the device solely in a non-infringing manner. Given that the 'default' position of the stir stick is stationary and thus infringing, the dissent contends that nearly all users would infringe at least some of the time during normal operation. Therefore, the non-infringing use (continuous stirring) is not truly 'substantial.' The dissent concludes that Vita-Mix presented enough evidence to suggest that Basic's instructions and product design encouraged a normal use that would inevitably include periods of infringement, creating a factual dispute that should be decided by a jury.
Analysis:
This case reinforces the strength of the 'substantial non-infringing use' doctrine as a safe harbor for manufacturers of multi-use products. It clarifies that as long as a product has a common, practical, and intended non-infringing use, the manufacturer is shielded from contributory infringement liability, even if the product can be easily used to infringe. The decision makes it more difficult for patentees to target manufacturers of versatile components. At the same time, the court's holding on direct infringement affirms that patentees can prove their case with strong circumstantial evidence, preventing infringers from avoiding liability simply because the infringing act was not directly caught on camera.
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