Indirect Infringement Toolkit: Knowledge Evidence, Direction or Control Proof, and Substantial Noninfringing Use Analyses

Summary. This toolkit collects the working documents for proving or defending an indirect patent infringement claim, each introduced by its purpose, its owner, and when to use it, and followed by drafting commentary tied to the governing cases. It opens with a claim-by-actor chart that sorts every claim step by the party who performs it and maps the theories that follow. The knowledge templates include a dated knowledge timeline with a willful blindness worksheet, two versions of a patentee's notice letter, the accused infringer's response and hold notice, an opinion-of-counsel request with a good-faith noninfringement memo outline, an instruction and marketing audit matrix, and a discovery set aimed at knowledge and intent. The direction-or-control templates include an Akamai proof matrix, a terms-of-service and onboarding review with alternative clause language, and pleading paragraphs paired with a motion-to-dismiss response map. The noninfringing-use templates include an analysis memo that begins by defining the component and a protocol for telemetry and survey studies, and the toolkit closes with special verdict questions, indemnity tender letters, an FAQ, and practical takeaways.

Indirect infringement cases turn on three questions that sound simple and are not: when the defendant knew about the patent, whether it made someone else perform a claimed step, and what else the accused feature is actually used for. The answers sit in calendars, contracts, help pages, and telemetry that nobody organizes until the expert reports are due. These templates organize them, from the first letter to the verdict form.

The short answer

• Knowledge evidence is built, not found. A dated log of every way the defendant could have learned of the patent, tested against the willful blindness standard, decides when inducement and contributory damages begin. The notice letter is the patentee's best entry in that log and the accused infringer's best reason to form a documented good-faith position.
• Direction or control is proved from the defendant's own paper: the contract term that makes a step a condition of service, the onboarding guide that dictates how and when, the API that rejects anything else. The proof matrix ties each step performed by someone else to that evidence, or shows its absence.
• Substantial noninfringing use is a numbers question once the component is defined correctly. Define the feature actually sold, list every use, and measure each one; adjectives and argument by counsel do not count.
• Both sides' paper is here: the patentee's letter and pleading paragraphs, and the accused infringer's response, opinion request, contract alternatives, and indemnity reply.

How to use this toolkit

Each template states its purpose, its owner, and when to use it, then gives the template and a short drafting commentary with the controlling authority. Bracketed text in capitals is to be filled in. Use one reference system across every document: K- for knowledge entries, I- for instruction documents, DC- for direction-or-control entries, and U- for usage data, so that a declaration, an expert report, and a verdict-form exhibit can all cite "K-03" and mean the same letter.

The sample entries use the facts of the worked example in Indirect and Divided Patent Infringement: Inducement, Contributory Liability, and the Akamai Problem: Juniper Labs runs a SaaS analytics platform; Stillwater Data LLC owns claim 1 (a method of receiving a dataset in a defined schema from a client device, generating a risk score on a server, and displaying the score with a confidence band on the client device) and claim 12 (a parallel system claim). Stillwater's letter with claim charts arrived on March 4, 2024; Juniper's noninfringement opinion followed in April; Stillwater sued in September. Some sample entries add invented facts for illustration. The order of tasks is in the Indirect Patent Infringement Claim Checklist: A Practical Checklist, and the narrative walk-through is in Pleading and Proving Induced and Contributory Patent Infringement: A Practical Guide.

Template 1: Claim-by-actor chart and theory map

Purpose: sort every claim element by the party who performs or provides it, and see at a glance which theories are open. Owner: the lead technical lawyer, reviewed by whoever handles claim construction. When to use: before a notice letter is drafted or answered, and again after the claim construction ruling.

Theory map. [Check each that applies and record the evidence reference.]

• Direct infringement by the defendant alone
• Divided infringement attributed to the defendant (method claims)
• Inducement of customers or other third parties
• Contributory infringement (identify the component sold)
• § 271(f) supply of components for combination abroad (not available for method claims)
• § 271(g) importation of a product made by a patented process

Drafting commentary. The chart answers the threshold question every indirect theory shares: who is the single direct infringer? Without one, there is nothing to induce, Limelight Networks, Inc. v. Akamai Technologies, Inc., 572 U.S. 915 (2014). For split method claims, the "Consequence" column feeds Template 8, because steps performed by others count against the defendant only if it directs or controls them or shares a joint enterprise with the performers, Akamai Technologies, Inc. v. Limelight Networks, Inc., 797 F.3d 1020 (Fed. Cir. 2015) (en banc). For system claims, ask who puts the whole system into service and benefits from it, Centillion Data Systems, LLC v. Qwest Communications International, Inc., 631 F.3d 1279 (Fed. Cir. 2011); a vendor whose merchants did that, and who was not shown to direct or control their use, escaped a verdict in CloudofChange, LLC v. NCR Corp., 123 F.4th 1333 (Fed. Cir. 2024). Two other rules belong in the margin: selling equipment that can perform a claimed process is not direct infringement of the process, Joy Technologies, Inc. v. Flakt, Inc., 6 F.3d 770 (Fed. Cir. 1993), and § 271(f) does not apply to method claims, Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 576 F.3d 1348 (Fed. Cir. 2009). Rows whose consequence turns on a construction ("displaying ... on the client device") go straight to the claim construction team; see the Claim Construction Toolkit: Charts, Briefs, Expert Declarations, and Hearing Materials.

Template 2: Knowledge timeline, evidence log, and willful blindness worksheet

Purpose: one dated record of every way the defendant learned, or could have learned, of each asserted patent and of the alleged infringement. Owner: a paralegal maintains it; the trial lawyer reviews it monthly. When to use: from the first contact between the parties until the verdict form is drafted.

Part A: Evidence log

Part B: Willful blindness worksheet

Drafting commentary. Inducement and contributory infringement both require knowledge of the patent, and inducement requires knowledge that the induced acts infringe; willful blindness counts, but only if the defendant subjectively believed there was a high probability that the fact existed and took deliberate actions to avoid learning it, Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754 (2011). Part B tracks those two prongs; a "yes" in one row rarely proves both. Knowledge is usually circumstantial: possession of the patentee's datasheets and products marked with parent patents, imitation of those products, and admitted patent monitoring supported actual knowledge in SynQor, Inc. v. Artesyn Technologies, Inc., 709 F.3d 1365 (Fed. Cir. 2013); marking in a small, competitive industry, together with internal documents, supported knowledge in WBIP, LLC v. Kohler Co., 829 F.3d 1317 (Fed. Cir. 2016); and hiring the patentee's former employees helped plead it in Lifetime Industries, Inc. v. Trim-Lok, Inc., 869 F.3d 1372 (Fed. Cir. 2017). Do not log a "patent pending" legend as knowledge of an issued patent, State Industries, Inc. v. A.O. Smith Corp., 751 F.2d 1226 (Fed. Cir. 1985). The date in the K- column with the strongest proof sets the start of contributory damages, as the patentee's letter did in Aro Manufacturing Co. v. Convertible Top Replacement Co., 377 U.S. 476 (1964), and it also anchors willfulness: where the defendant first learned of the patents from a notice letter, the willfulness finding could not reach back earlier, SRI International, Inc. v. Cisco Systems, Inc., 930 F.3d 1295 (Fed. Cir. 2019). The defendant's own documents come in as party admissions under Fed. R. Evid. 801(d)(2); third-party records usually need a business-records foundation under Fed. R. Evid. 803(6).

Template 3: Patent notice letter, two versions

Purpose: give the recipient knowledge of the patent (and, in Version B, of the alleged infringement) on a provable date, without saying more than the patentee is prepared to defend. Owner: patentee's litigation counsel, signed by an officer or counsel of the patentee. When to use: before suit, once the claim-by-actor chart (Template 1) is complete.

[PATENTEE LETTERHEAD]

[DATE] · By courier with delivery confirmation and by email

[NAME], General Counsel, [ACCUSED COMPANY], [ADDRESS]

Re: U.S. Patent No. [NUMBER] and [PRODUCT NAME AND VERSION]

1. The patent. [PATENTEE] owns U.S. Patent No. [NUMBER], issued [DATE] and titled "[TITLE]." A copy is enclosed.

2A. Version A (knowledge only). We write to bring the patent to your attention in connection with [PRODUCT] and to invite a discussion of [PATENTEE]'s licensing program.

2B. Version B (charging letter). [PATENTEE] has concluded that [PRODUCT, version], and its use by your customers as your materials direct, infringe at least claims [NUMBERS]. Exhibit A is an exemplary claim chart for claim [NUMBER]. Exhibit B lists, by URL and capture date, the onboarding guides, help pages, and API documents that instruct customers to perform the claimed steps.

3. Request. Please [provide your position / contact us to discuss a license] by [DATE, at least 30 days out].

4. Preservation. Please preserve documents concerning the patent and [PRODUCT], including every version of the materials in Exhibit B and data showing how customers use [FEATURE].

5. Reservation. [PATENTEE] reserves all rights.

Drafting commentary. Version B does three jobs at once. It supplies knowledge of the patent and of the alleged infringement for §§ 271(b) and (c), Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754 (2011); it is actual notice under 35 U.S.C. § 287(a), which requires an affirmative communication of a specific charge of infringement by a specific product, Amsted Industries Inc. v. Buckeye Steel Castings Co., 24 F.3d 178 (Fed. Cir. 1994), sent by the patentee or someone acting for it, Lans v. Digital Equipment Corp., 252 F.3d 1320 (Fed. Cir. 2001); and it probably creates declaratory judgment jurisdiction. Version A may not satisfy § 287(a), because notice that a patent exists is not notice of the infringement, and it makes knowledge of infringement easier to dispute; in exchange it carries a lower, though not zero, risk of a declaratory judgment suit. If § 287(a) notice matters, send Version B. The test is whether all the circumstances show a substantial and immediate controversy, MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007). A telephone call saying a product "may infringe," that licenses were available, and that claim charts would follow could support jurisdiction in 3M Co. v. Avery Dennison Corp., 673 F.3d 1372 (Fed. Cir. 2012); letters combined with suits against other manufacturers did in Micron Technology, Inc. v. MOSAID Technologies, Inc., 518 F.3d 897 (Fed. Cir. 2008). Sufficiently numerous and pointed letters can also subject the patentee to personal jurisdiction in the recipient's home forum, Trimble Inc. v. PerDiemCo LLC, 997 F.3d 1147 (Fed. Cir. 2021). Keep statements accurate and claim-specific: good-faith infringement communications cannot be enjoined absent objective baselessness, Myco Industries, Inc. v. BlephEx, LLC, 955 F.3d 1 (Fed. Cir. 2020), but many states regulate bad-faith assertion letters (Vermont's statute, 9 V.S.A. §§ 4195 to 4199, was the first). For the broader letter craft, see the Drafting a Demand Letter: A Practical Checklist.

Template 4: Response letter and internal hold notice

Purpose: acknowledge the letter without admissions, ask for the information needed to evaluate it, and freeze the evidence. Owner: in-house counsel, with outside counsel's review. When to use: within a few business days of receiving any letter that names a patent.

Response letter

[DATE] · Re: Your letter of [DATE] concerning U.S. Patent No. [NUMBER]

We acknowledge receipt of your letter. [COMPANY] respects valid intellectual property rights and is reviewing the patent and your letter. To complete that review, please identify (1) each claim you contend is infringed, and by which products and versions; (2) any third parties you contend directly infringe, and the conduct of [COMPANY] you contend induces or contributes to that infringement; (3) any licensees of the patent and any products marked with it; and (4) any litigation or Patent Office proceedings involving the patent or its family. We will respond further within [NUMBER] days after receiving that information. Nothing in this letter is an admission, and [COMPANY] reserves all rights.

PRIVILEGED AND CONFIDENTIAL: ATTORNEY-CLIENT COMMUNICATION

To: [custodians in product, engineering, documentation, support, sales, and marketing] · From: [COUNSEL] · Re: Preservation and handling, [MATTER]

1. Preserve every version of the help center, onboarding guides, API references, release notes, training materials, sales decks, support tickets, design documents, and usage dashboards concerning [FEATURE], from [DATE] forward. Automatic deletion is suspended for these materials.
2. Do not change customer-facing documentation for [FEATURE] except through paragraph 4.
3. Do not analyze the patent yourself or discuss it in email, chat, or tickets. Send questions to [COUNSEL].
4. Changes to documentation or defaults for [FEATURE] require [COUNSEL]'s written approval, and the prior version must be archived with its live dates.
5. Acknowledge this notice by [DATE].

Drafting commentary. The response letter's four questions do real work: the answers frame the indirect theory, expose marking problems, and reveal earlier proceedings that may supply prior art or estoppel. The hold notice protects against sanctions under Fed. R. Civ. P. 37(e) for lost electronically stored information, and paragraph 4 creates the dated version history that Template 6 needs. Paragraph 3 routes patent questions to counsel; it is not a policy against reading patents, which can look like willful blindness when combined with copying. Calendar the procedural clocks the letter starts: an inter partes review petition is barred if filed more than one year after service of an infringement complaint, and filing a declaratory judgment action challenging validity first bars the petition altogether, 35 U.S.C. § 315(a)(1) and (b). A declaratory judgment action under 28 U.S.C. § 2201 may still be the right move; see the Declaratory Relief Toolkit: Complaints, Jurisdictional Briefing, and Discretionary Dismissal and the Litigation Hold and Evidence Preservation Checklist: A Practical Checklist.

Template 5: Opinion request and good-faith noninfringement memo outline

Purpose: obtain a noninfringement analysis that can actually support a good-faith belief, and decide deliberately whether to rely on it. Owner: general counsel, with opinion counsel who will not try the case. When to use: promptly after a charging letter or complaint, and before any decision to keep the accused instructions in place.

Request to opinion counsel

Scope: (a) direct and indirect infringement of each claim of U.S. Patent No. [NUMBER], for each product version and configuration in Attachment 1; (b) construction of the disputed terms; (c) [in a separate memorandum] validity.

Materials enclosed: the patent, its complete prosecution history, and related family members; the patentee's letter and charts; architecture diagrams and code excerpts for [FEATURE]; every customer-facing instruction in the Template 6 matrix; usage data by configuration; any earlier litigation or Patent Office records.

Access: a test account and interviews with [ENGINEERS].

Form: written, signed, and dated, stating all assumptions; drafts stay within the legal department.

Memo outline. I. Question presented. II. Materials reviewed, listed. III. The patent and its prosecution history. IV. Claim construction. V. Element-by-element analysis for each configuration. VI. Indirect infringement: who performs each step, what the instructions say, and which uses do not infringe. VII. Conclusions, with confidence levels. VIII. Recommendations for documentation, defaults, and design.

Drafting commentary. A reasonable, good-faith belief that the induced acts do not infringe negates the intent inducement requires; a belief that the patent is invalid does not, Commil USA, LLC v. Cisco Systems, Inc., 575 U.S. 632 (2015). That is why the invalidity analysis goes in a separate document: it matters for willfulness and enhancement, not for intent. Opinions that the defendant actually believed defeated inducement in DSU Medical Corp. v. JMS Co., 471 F.3d 1293 (Fed. Cir. 2006) (en banc in relevant part), and a counseled good-faith belief protected corporate officers in Manville Sales Corp. v. Paramount Systems, Inc., 917 F.2d 544 (Fed. Cir. 1990). Quality controls value: the trial court permissibly gave little weight to oral opinions rendered without the prosecution history or the accused device in Golden Blount, Inc. v. Robert H. Peterson Co., 438 F.3d 1354 (Fed. Cir. 2006), which is why the materials list is long. Under 35 U.S.C. § 298, failing to obtain or present an opinion cannot be used to prove intent or willfulness, so the reliance decision is genuinely optional. Reliance waives privilege over communications on the same subject, In re EchoStar Communications Corp., 448 F.3d 1294 (Fed. Cir. 2006), but ordinarily not over trial counsel, In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc); seek an order under Fed. R. Evid. 502 to contain any waiver. A documented investigation and good-faith belief also weigh against enhancement, Read Corp. v. Portec, Inc., 970 F.2d 816 (Fed. Cir. 1992). See Attorney-Client Privilege and Work Product for Businesses: Upjohn, In-House Counsel, and the Common Interest.

Template 6: Instruction and marketing audit matrix

Purpose: a coded inventory of everything the defendant told anyone about the accused feature, with dates, reach, and the mode each document teaches. Owner: a documentation lead working with counsel (defendant), or the patentee's technical team working from captures and production. When to use: after notice; again when production arrives; and before any change to documentation.

Drafting commentary. The code column applies the line the cases draw. Instructions that teach a noninfringing technique do not show intent even if some users ignore them, Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317 (Fed. Cir. 2009); instructions telling users that a step is necessary can support inducement even though the product also has noninfringing uses, Toshiba Corp. v. Imation Corp., 681 F.3d 1358 (Fed. Cir. 2012). Merely selling a product that can be used to infringe, without active steps, is not enough, Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263 (Fed. Cir. 2004). The reach column feeds two other elements: wide distribution of instructions that teach the claimed use supports an inference of direct infringement, Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261 (Fed. Cir. 1986), and it helps prove that the encouragement actually caused infringement, which inducement requires, Power Integrations, Inc. v. Fairchild Semiconductor International, Inc., 843 F.3d 1315 (Fed. Cir. 2016). Rows like I-25 are the defendant's evidence of noninfringing modes for Template 11. Authenticate captures and archived versions under Fed. R. Evid. 901, with certifications under Fed. R. Evid. 902 where available.

Template 7: Knowledge and intent discovery set

Purpose: written discovery and deposition topics aimed at the facts that decide indirect claims. Owner: the discovery lead on either side; the defendant uses it as a preparation map. When to use: the first wave of fact discovery, after infringement contentions.

Requests for production. (1) Every version of each customer-facing document concerning [FEATURE], with the dates each version was live. (2) Documents concerning [PATENTEE] or the patents-in-suit, including competitive analyses, prosecution files that cite them, and communications with customers about them. (3) Usage data sufficient to show, by month, the number of customers and jobs using each configuration of [FEATURE]. (4) Documents concerning design decisions for [FEATURE], including defaults and alternatives considered. (5) Contracts, terms of service, and onboarding requirements governing customer performance of [STEP].

Interrogatories. (1) State when and how you first learned of each patent-in-suit, and identify each person with that knowledge. (2) If you contend you believed in good faith that you did not infringe, state the factual basis of that belief, when it was formed, and whether you will rely on advice of counsel. (3) Identify every use of [FEATURE] you contend does not infringe, the share of total use it represents, and the data supporting that share.

Requests for admission. (1) Admit that Exhibit [__] is a true copy of [I-07] as it appeared on [DATE]. (2) Admit that [FEATURE] is enabled by default. (3) Admit that you received [K-03] on [DATE].

Rule 30(b)(6) topics. (1) First knowledge of each patent and the company's response. (2) Design of [FEATURE], including defaults. (3) Creation, approval, and distribution of each document in the instruction matrix. (4) Customer usage of [FEATURE] and the data kept about it. (5) Terms of service and onboarding requirements for [STEP]. (6) Every change to [FEATURE] or its documentation after [DATE].

Drafting commentary. These requests go out under Fed. R. Civ. P. 34, Fed. R. Civ. P. 33, Fed. R. Civ. P. 36, and Fed. R. Civ. P. 30(b)(6), and each must be proportional to the needs of the case under Fed. R. Civ. P. 26(b)(1); asking for aggregated monthly usage rather than raw logs usually ends the proportionality fight. Interrogatory 2 forces the reliance decision; several districts' local patent rules, such as N.D. Cal. Patent L.R. 3-7, also set a deadline for electing to rely on advice of counsel, and the election defines the waiver under EchoStar. The admissions in the third set are cheap and save trial time on authenticity and dates. The defendant should prepare its corporate witness on topic 1 with the Template 2 log in hand; a witness who cannot say when the company learned of the patent makes the knowledge date a jury argument. See Preparing and Defending a Rule 30(b)(6) Deposition and the Discovery Toolkit: A Roadmap and Resource Guide for Federal Discovery.

Template 8: Direction-or-control proof matrix

Purpose: tie every method step performed by someone other than the defendant to the evidence that the step is, or is not, attributable to the defendant. Owner: the lawyer responsible for the divided-infringement theory or defense. When to use: before pleading a divided-infringement theory, and again at summary judgment.

Drafting commentary. An entity is responsible for another's performance of method steps where it directs or controls that performance, which includes agency, contractual obligation, and the case where it conditions participation in an activity or receipt of a benefit on performance of a step and establishes the manner or timing of that performance, or where the actors form a joint enterprise, Akamai Technologies, Inc. v. Limelight Networks, Inc., 797 F.3d 1020 (Fed. Cir. 2015) (en banc). Define the activity and the benefit generously; the benefit may be intangible and the condition need not be a legal obligation, but "mere guidance or instruction" is not enough, Travel Sentry, Inc. v. Tropp, 877 F.3d 1370 (Fed. Cir. 2017). Physicians who condition treatment on a patient's step and prescribe its dose and schedule satisfy both prongs, Eli Lilly & Co. v. Teva Parenteral Medicines, Inc., 845 F.3d 1357 (Fed. Cir. 2017). The counter-evidence column is where defendants win: there was no conditioning where patients could use a monitoring system without performing the claimed steps, Medgraph, Inc. v. Medtronic, Inc., 843 F.3d 942 (Fed. Cir. 2016), and arm's-length collaboration fell short in Golden Hour Data Systems, Inc. v. emsCharts, Inc., 614 F.3d 1367 (Fed. Cir. 2010). The joint-enterprise column tracks Restatement (Second) of Torts § 491: agreement, common purpose, community of pecuniary interest, and an equal right of control. Use this matrix for method claims only; for system claims the question is who uses the whole system, and requiring a customer to supply one element is not direction or control of that use, CloudofChange, LLC v. NCR Corp., 123 F.4th 1333 (Fed. Cir. 2024). The payoff for patentees is that attribution makes the defendant a direct infringer, so knowledge is irrelevant and damages can reach back six years under 35 U.S.C. § 286.

Template 9: Terms-of-service and onboarding review with alternative clauses

Purpose: identify contract and documentation language that makes a claimed step a condition of service, and offer accurate alternatives. Owner: product counsel with the product manager for [FEATURE]; patentees use the same review as a reading guide for conditioning evidence. When to use: after notice, during design-around work, and when standard terms are next revised.

Drafting commentary. The alternatives reduce exposure only if the product changes with them. Whether a defendant conditions participation and sets the manner or timing of performance is a question of fact under Akamai, and Travel Sentry looked past the formal terms of a nonbinding memorandum to what the other actor had to do to get the benefit it wanted, so a reworded contract over an unchanged API proves little. Changes made after notice limit future exposure; they do not erase past liability, though a documented change is evidence of remedial action when enhancement is considered, Read Corp. v. Portec, Inc., 970 F.2d 816 (Fed. Cir. 1992). Patentees should read the left-hand column the other way: "shall," "must," "only," and "required" are conditioning words, and a welcome letter or installation guide that dictates how to perform the step is manner-or-timing evidence, as Limelight's were. For contract structure generally, see Cloud and SaaS Agreements: Service Levels, Data Rights, Security, and Exit and Drafting Software License Agreements: Key Terms and Negotiation Points.

Template 10: Pleading paragraphs and motion-to-dismiss response map

Purpose: plead each indirect theory with facts, and test those facts on a motion. Owner: patentee's drafting counsel; accused infringer's motion counsel. When to use: drafting the complaint; evaluating a Rule 12(b)(6) motion.

Knowledge. [DEFENDANT] has known of the '[XXX] patent since at least [DATE], when [the examiner cited it against DEFENDANT's own Application No. [NUMBER] / DEFENDANT received the letter attached as Exhibit [__]].

Direct infringers. [DEFENDANT]'s customers, including [NAMES, if known], perform each step of claim [] when they [DESCRIBE], as shown in Exhibit [].

Inducing acts and intent. [DEFENDANT] instructs customers to perform those steps in its onboarding guide ("[QUOTE]"), its API reference ("[QUOTE]"), and its training course [NAME], enables [FEATURE] by default, and continued to distribute those instructions after [DATE] knowing, for the reasons stated in Exhibit [], that the instructed use practices claim [].

Divided infringement, in the alternative. [DEFENDANT] conditions customers' use of [SERVICE] on performance of [STEP] under § [__] of its customer agreement and establishes the manner and timing of that performance through [SPECIFICATION].

Contributory infringement. [COMPONENT], which [DEFENDANT] sells in the United States, is a material part of the invention, is especially adapted for [USE], and has no substantial noninfringing use because [FACTS].

Drafting commentary. Every count must state a plausible claim under Fed. R. Civ. P. 8(a)(2), Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007), and Ashcroft v. Iqbal, 556 U.S. 662 (2009). Bill of Lading sustained inducement counts built on quotations from the defendants' own websites and advertising without requiring a named direct infringer, which is why the model paragraphs quote documents. A complaint that alleged the hiring of employees who knew the patent and the defendant's own installation of the accused product pleaded knowledge and inducement in Lifetime Industries, Inc. v. Trim-Lok, Inc., 869 F.3d 1372 (Fed. Cir. 2017). Expect the detail required to rise with the complexity of the technology, Bot M8 LLC v. Sony Corp. of America, 4 F.4th 1342 (Fed. Cir. 2021), and plan to amend under Fed. R. Civ. P. 15 when discovery fills the knowledge column. See Motions to Dismiss Under Rule 12: A Practical Guide for Plaintiffs and Defendants and the Responsive Pleading Toolkit: Answer Templates, Affirmative Defense Libraries, and Counterclaim Outlines.

Template 11: Substantial noninfringing use analysis memo

Purpose: decide, with evidence, whether the accused component is a staple article suitable for substantial noninfringing use. Owner: the lawyer responsible for the § 271(c) claim or defense, working with the usage expert. When to use: before contentions are final, and again when expert reports are drafted.

Sample facts. Assume Juniper also licenses "Juniper Connector," a downloadable module that converts a customer's records into the Juniper Schema. Stillwater accuses the Connector of contributory infringement of claim 1.

I. The component as sold. What is sold, offered, or imported: the Connector, licensed separately, installed separately, and documented separately.

II. The claimed use. The Connector prepares the dataset received in step 1(a).

III. Use inventory.

IV. Burden and proof. The patentee's prima facie case; the defendant's evidence of actual noninfringing use; any gaps.

V. Effect on inducement. Whether the instructions (Template 6) steer customers to U-01 regardless of U-02.

VI. Knowledge. When the defendant knew the component was especially made or adapted for the claimed use.

Drafting commentary. Start with Part I, because the answer depends on what the component is. The inquiry looks at the material actually sold and how purchasers use it, not at the theoretical uses of one ingredient, Hodosh v. Block Drug Co., 833 F.2d 1575 (Fed. Cir. 1987), and a seller cannot escape by embedding a component with no noninfringing use inside a larger product that has other uses, Ricoh Co. v. Quanta Computer Inc., 550 F.3d 1325 (Fed. Cir. 2008); the custom XML editor, not all of Word, was the component in i4i Ltd. Partnership v. Microsoft Corp., 598 F.3d 831 (Fed. Cir. 2010). A use is substantial unless it is "unusual, far-fetched, illusory, impractical, occasional, aberrant, or experimental," Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317 (Fed. Cir. 2009); on the sample facts U-02 is a real, regular use, and the Connector is probably a staple. The patentee bears the burden of persuasion, but once it shows that the instructions teach only the infringing configuration, the defendant must come forward with evidence that people actually use the component another way, Golden Blount, Inc. v. Robert H. Peterson Co., 438 F.3d 1354 (Fed. Cir. 2006). General assertions that a noninfringing mounting method was "common" did not carry that burden in Spansion, Inc. v. International Trade Commission, 629 F.3d 1331 (Fed. Cir. 2010), which also upheld a knowledge finding based on license negotiations plus the absence of any substantial noninfringing use. A reasonable jury could find substantial noninfringing use of a catheter in C.R. Bard, Inc. v. Advanced Cardiovascular Systems, Inc., 911 F.2d 670 (Fed. Cir. 1990), where the court also noted that counsel's figures at argument are not evidence. Part V matters because a staple finding defeats § 271(c) but not § 271(b) where the defendant's own materials steer users to the infringing mode, Toshiba Corp. v. Imation Corp., 681 F.3d 1358 (Fed. Cir. 2012); the Supreme Court borrowed the staple-article rule for copyright in Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417 (1984), and later explained that purposeful encouragement of infringement defeats the protection a staple product otherwise enjoys, Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005).

Template 12: Usage study protocol

Purpose: a defensible measurement of how customers actually use the accused feature, for direct infringement, noninfringing use, and the royalty base. Owner: a data or survey expert retained through counsel. When to use: early enough in fact discovery to fix data gaps, and in any event before opening expert reports.

1. Question. State it in the legal terms it serves, for example: "Of all Connector jobs from [DATE] to [DATE], what share never reached Juniper scoring?"
2. Unit of analysis. Choose the unit the legal question counts (customer, job, device, or unit sold) and explain the choice.
3. Sources and custody. Identify each table and field, the retention policy, and the extraction queries; preserve the queries and hash the extracts.
4. Definitions. Define in advance the events that show infringing use, noninfringing use, and both.
5. Validation. Manually check a random sample of records against source logs and report the error rate.
6. Survey, if telemetry is missing. Define the universe, sample, neutral questions, controls, and response rate before fielding.
7. Output. Summary tables with full method documentation, with the underlying data produced to the other side.
8. Limits. Report periods without data and customers who disabled telemetry rather than extrapolating silently.

Drafting commentary. Usage evidence is what most indirect cases lack. The patentee in Toshiba lost its contributory claim because it offered no survey, expert, or usage evidence that the noninfringing use was insubstantial, and Spansion turned on evidence of what customers actually did. The study must satisfy Fed. R. Evid. 702, which requires sufficient facts and a reliable application of a reliable method; summaries come in under Fed. R. Evid. 1006 only if the underlying data is made available; and the logs themselves are usually business records under Fed. R. Evid. 803(6). Running the first pass through a consulting expert keeps a disappointing answer protected under Fed. R. Civ. P. 26(b)(4)(D), although the underlying data remains discoverable. The same numbers drive the royalty base, which must track the infringement actually proved, Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263 (Fed. Cir. 2004). Survey design principles carry over from other fields; see Consumer Survey Expert Methodology in Trademark Cases: A Practical Guide and the Expert Deposition Toolkit: Outline Frameworks, Reliance Material Requests, and Rule 26 Protection Maps.

Template 13: Special verdict questions

Purpose: a verdict form that separates theories and time periods so that a later error in one does not take down the rest. Owner: trial counsel for either side. When to use: in the pretrial order and at the charge conference.

1. Has [PATENTEE] proved by a preponderance of the evidence that [CUSTOMERS] directly infringed claim [__]? (Answer for each claim.)
2. If so, on what date did [DEFENDANT] first know of the '[XXX] patent and that the induced acts infringed it, or become willfully blind to those facts? Date: ________
3. Has [PATENTEE] proved that, after that date, [DEFENDANT] actively induced the infringement found in Question 1?
4. Has [PATENTEE] proved that, after that date, [DEFENDANT] contributed to that infringement by selling [COMPONENT], which has no substantial noninfringing use?
5. Has [PATENTEE] proved that [DEFENDANT] directed or controlled [CUSTOMERS'] performance of step [], so that [DEFENDANT] itself performed every step of claim []?
6. State damages separately for (a) any infringement found in Question 5, from [DATE SIX YEARS BEFORE SUIT], and (b) any infringement found in Questions 3 and 4, from the date in Question 2.

Drafting commentary. Special verdicts are authorized by Fed. R. Civ. P. 49, and objections to instructions must be made on the record before the jury retires under Fed. R. Civ. P. 51. Start from the Federal Circuit Bar Association's model instructions; a custom instruction that infringement "need not have been actually caused" by the defendant's encouragement cost a verdict in Power Integrations, Inc. v. Fairchild Semiconductor International, Inc., 843 F.3d 1315 (Fed. Cir. 2016), and an instruction that a defendant is not liable if it had "no reason to be aware" of the patent was described as potentially erroneous in isolation in SynQor, Inc. v. Artesyn Technologies, Inc., 709 F.3d 1365 (Fed. Cir. 2013). Question 2 implements Aro II's rule that indirect liability starts with knowledge; Question 6 keeps the strict-liability attribution period separate from the knowledge period. Preserve sufficiency arguments with a motion under Fed. R. Civ. P. 50(a). See the Jury Trial Toolkit: Voir Dire, Openings, Exhibits, and Instructions and the Post-Trial Toolkit: Rule 50 Renewals, New Trial Briefs, and Remittitur Analyses.

Template 14: Indemnity tender and supplier response

Purpose: move the defense of a customer suit to the supplier, or decline it on a stated ground, without creating evidence of intent. Owner: the customer's counsel (tender); the supplier's counsel (response). When to use: as soon as a customer receives a letter or complaint about the supplier's product.

Tender. [CUSTOMER] has been [sued / sent a letter] alleging that its use of [PRODUCT] infringes U.S. Patent No. [NUMBER]; a copy is enclosed. Under § [__] of our [AGREEMENT], [CUSTOMER] tenders its defense and demands indemnity. Please confirm within [NUMBER] days whether you accept, and identify any reservation of rights.

Response. [SUPPLIER] accepts the defense [subject to a reservation of rights under § [__] for combinations, modifications, or use contrary to the documentation] / declines because [REASON]. [SUPPLIER] intends to [seek a stay of the claims against you / intervene / bring a declaratory judgment action]. Please route all communications with [PATENTEE] through counsel. We propose a common-interest agreement for shared analysis.

Drafting commentary. Absent contrary agreement, a merchant seller warrants that goods are delivered free of rightful infringement claims under UCC § 2-312(3), and most software agreements replace that warranty with an express indemnity whose carve-outs (combinations, modifications, customer specifications) track indirect-infringement theories. An indemnity alone generally does not show intent to induce, unless its primary purpose is to overcome the deterrent effect of the patent laws, Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464 (Fed. Cir. 1990), so describe the business reason for the indemnity in the agreement itself. A supplier obligated to indemnify has standing to seek a declaratory judgment, Arris Group, Inc. v. British Telecommunications PLC, 639 F.3d 1368 (Fed. Cir. 2011), and litigation against the manufacturer generally takes precedence over customer suits, Katz v. Lear Siegler, Inc., 909 F.2d 1459 (Fed. Cir. 1990); In re Nintendo Co., 756 F.3d 1363 (Fed. Cir. 2014), though only where the supplier case will resolve the major issues, Spread Spectrum Screening LLC v. Eastman Kodak Co., 657 F.3d 1349 (Fed. Cir. 2011). See Indemnification and Limitation of Liability: The Risk Allocation Engine of Every Contract.

Frequently asked questions

Should a patentee send Version A or Version B of the notice letter? Version B, if the patentee is ready to litigate in the recipient's home forum and needs § 287(a) notice and a clean knowledge date. Version A, if the goal is a licensing conversation and the patentee can live with a softer knowledge record and no actual notice.

What should a small company do first when a letter arrives? Send the Template 4 hold notice the same week, build the Template 6 matrix before anyone edits a help page, and then commission the Template 5 analysis with complete materials.

Can a patentee rely on terms of service that customers never read? Yes, if the terms reflect what the service actually requires; conditioning turns on what the other actor must do to obtain the benefit, not on whether it read the contract. A term the vendor never enforces, contradicted by an API that accepts anything, is weak evidence.

Should the usage study be run by the testifying expert? Often not at first. A consulting expert can run the initial analysis under the protection of Rule 26(b)(4)(D); if the answer helps, the testifying expert repeats it with the documentation Template 12 requires.

How precise must the knowledge date be? As precise as the evidence allows. The verdict form should ask the jury for a date, because damages for inducement and contributory infringement run from it.

Practical takeaways

• Keep one numbered record system (K-, I-, DC-, U-) so every exhibit, report, and verdict question points to the same evidence.
• The knowledge log and the instruction matrix are the two documents most worth building early, for both sides.
• Prove direction or control, or its absence, from the defendant's own contracts, guides, and API behavior, step by step.
• Define the component before measuring noninfringing uses, and measure them with data a court will admit.
• Draft the verdict form early; it shows whether the proof plan actually covers every element and period.

This document is general information, not legal advice for any particular situation; the law changes, and the facts matter.

Related Documents

Related Articles

• Indirect and Divided Patent Infringement: Inducement, Contributory Liability, and the Akamai Problem: the doctrine these templates put into practice.
• Patent Licensing and Exhaustion: Field-of-Use Limits, Covenants Not to Sue, and What the First Sale Ends: authorized sales that leave nothing to induce.
• Declaratory Judgment Actions: Jurisdiction, Discretion, and the Race to the Courthouse: the risk every notice letter carries.
• Trademark Liability Online: Keyword Advertising, Marketplaces, and Contributory Infringement After Tiffany v. eBay: secondary liability for marks, a useful comparison.

Related Guides

• Pleading and Proving Induced and Contributory Patent Infringement: A Practical Guide: the step-by-step sequence in which these templates are used.
• Filing or Defending a Declaratory Judgment Action: A Practical Guide: the accused infringer's offensive option.
• Preparing and Defending a Rule 30(b)(6) Deposition: the deposition that fixes knowledge and instruction facts.

Related Checklists

• Indirect Patent Infringement Claim Checklist: A Practical Checklist: the order in which these templates come into play.
• Freedom-to-Operate Search: A Practical Checklist: clearance work that shapes knowledge and good faith.
• Litigation Hold and Evidence Preservation Checklist: A Practical Checklist: the preservation steps behind Template 4.
• Drafting a Demand Letter: A Practical Checklist: general letter discipline for Template 3.

Related Toolkits

• Patent Litigation Toolkit: A Roadmap and Research Guide: the broader patent case workflow.
• Patent Damages Toolkit: Royalty Models, Expert Reports, and Daubert Motions: turning usage data into a royalty base.
• Claim Construction Toolkit: Charts, Briefs, Expert Declarations, and Hearing Materials: the constructions that decide who performs each step.
• Declaratory Relief Toolkit: Complaints, Jurisdictional Briefing, and Discretionary Dismissal: pleadings for the supplier's declaratory judgment action.
• Responsive Pleading Toolkit: Answer Templates, Affirmative Defense Libraries, and Counterclaim Outlines: answering the indirect counts.
• Post-Trial Toolkit: Rule 50 Renewals, New Trial Briefs, and Remittitur Analyses: testing intent and predicate verdicts after trial.
• Online Trademark Enforcement Toolkit: Platform Notices, Test Purchase Records, and Contributory Liability Demands: knowledge-building notices in the trademark setting.