Commil United States, LLC v. Cisco Sys., Inc.
2015 U.S. LEXIS 3406, 135 S. Ct. 1920, 191 L. Ed. 2d 883 (2015)
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Rule of Law:
A defendant’s good-faith belief that a patent is invalid is not a defense to a claim of induced infringement under 35 U.S.C. § 271(b). The legal issues of infringement and validity are separate and distinct.
Facts:
- Commil USA, LLC (Commil) owns a patent for a method of implementing short-range wireless networks.
- Cisco Systems, Inc. (Cisco) manufactures and sells wireless networking equipment.
- Commil claimed that Cisco's equipment infringed its patent.
- Commil further alleged that by selling its equipment to customers, Cisco induced those customers to infringe Commil's patent rights.
- Cisco maintained a good-faith belief that Commil's patent was invalid.
- Cisco sought to use its belief in the patent's invalidity as a defense against the induced infringement claim.
Procedural Posture:
- Commil sued Cisco in the U.S. District Court for the Eastern District of Texas for direct and induced patent infringement.
- Following a first trial, the jury found Cisco liable for direct infringement but not induced infringement.
- The District Court granted Commil's motion for a new trial on the induced infringement claim.
- At the second trial, the District Court excluded evidence of Cisco's good-faith belief that Commil's patent was invalid.
- The jury in the second trial found Cisco liable for induced infringement.
- Cisco (appellant) appealed to the U.S. Court of Appeals for the Federal Circuit.
- The Court of Appeals held that the District Court erred in excluding the evidence, reasoning that a good-faith belief in invalidity could negate the specific intent required for induced infringement, and it remanded for a new trial.
- The Supreme Court granted certiorari to resolve the question of whether a good-faith belief in invalidity is a defense to induced infringement.
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Issue:
Does a defendant's good-faith belief that a patent is invalid negate the intent required for a claim of induced infringement under 35 U.S.C. § 271(b)?
Opinions:
Majority - Justice Kennedy
No. A defendant’s good-faith belief in a patent’s invalidity is not a defense to induced infringement. Under the Patent Act, infringement and validity are separate legal inquiries. Induced infringement requires proof that the defendant knew of the patent and knew the induced acts constituted infringement, a mental state that is not negated by a belief about the patent's underlying validity. The court reasoned that patents are presumed valid by statute, and allowing a subjective belief in invalidity as a defense would improperly weaken this presumption, which can only be overcome by clear and convincing evidence. The court noted that an accused infringer has multiple avenues to challenge a patent's validity directly, such as filing a declaratory judgment action or seeking review from the Patent Office, but cannot use a mere belief in invalidity to excuse the act of inducing infringement.
Dissenting - Justice Scalia
Yes. A defendant's good-faith belief that a patent is invalid is a defense to induced infringement. The dissent argues that it is a matter of basic logic: an invalid patent cannot be infringed. Since induced infringement requires 'knowledge that the induced acts constitute patent infringement' (per Global-Tech), a defendant who genuinely believes a patent is invalid cannot possibly possess the requisite knowledge that they are inducing infringement. The dissent contends that one cannot know they are causing the infringement of a right they believe does not legally exist. Therefore, a good-faith belief in invalidity directly negates the scienter element required for an induced infringement claim.
Analysis:
This decision solidifies the separation between patent infringement and patent validity, clarifying that they are distinct legal battlegrounds. By rejecting a 'good-faith belief in invalidity' defense, the Court reinforces the statutory presumption of patent validity and channels challenges to validity into specific, established procedural avenues. This prevents accused inducers from complicating infringement trials with subjective belief arguments, thereby streamlining litigation. The ruling places a higher burden on potential infringers to formally challenge a patent's validity before engaging in potentially infringing conduct, rather than relying on their own legal assessment as a shield against liability for inducement.
