On May 26, 2015, in a six-to-two decision, the Supreme Court
rejected the proposition that a good-faith belief that a patent is
invalid could be used as a defense to a claim of inducing patent
infringement. In Commil USA, LLC v. Cisco Systems, Inc.,
No. 13-896 (May 26, 2015), the Court re-affirmed the elements
required to prove inducement, and rejected the notion that a
good-faith belief of patent invalidity could be used as a defense.
The Court was clear, "[t]he scienter element for induced
infringement concerns infringement; that is a different issue than
validity . . . And because infringement and validity are separate
issues under the Act, belief regarding validity cannot negate the
scienter required under §271(b)." Commil USA,
LLC, No. 13-896, slip op. at 9.
Commil, the owner of a patent covering a method of implementing
short-range wireless networks, accused Cisco of both direct and
induced infringement for the manufacture and sale of wireless
networks. Id. at 1-2. After two trials, Cisco was found
liable of both; in the second trial, Cisco raised the defense to
inducement of a good-faith belief of patent invalidity, and the
District Court found evidence of such a good-faith belief
inadmissible. Id. at 1-3.
After that second trial, but before judgment was entered, the
Supreme Court issued its opinion in Global-Tech regarding
inducement. Id. at 3. In Global-Tech, the Court
held that induced infringement requires "the plaintiff to show
that the alleged inducer knew of the patent in question and knew
the induced acts were infringing." Id. at 3, 6. Based
upon that case, Cisco asked for reconsideration of the jury
instruction concerning inducement and the District Court denied
that request. On appeal the Federal Circuit held that
"'evidence of an accused inducer's good-faith belief
of invalidity may negate the requisite intent for induced
infringement.' The court saw 'no principled distinction
between a good-faith belief of invalidity and a good-faith belief
of non-infringement for the purpose of whether a defendant
possessed the specific intent to induce infringement of a
patent.'" Id. at 4.
The Supreme Court disagreed rejecting the notion that a good-faith
belief of invalidity is a defense to inducement. The Court noted
that "Section 271(b) requires that the defendant 'actively
induce[d] infringement.' That language requires intent to
'bring about the desired result,' which is infringement.
And because infringement and validity are separate issues under the
Act, belief regarding validity cannot negate the scienter required
under §271(b). When infringement is the issue, the validity of
the patent is not the question to be confronted." Id.
at 9-10. "[I]nvalidity is not a defense to infringement, it is
a defense to liability. " Id. at 11. "[I]f
belief in invalidity were a defense to induced infringement, the
force of [the presumption that a patent is valid under
§282(a)] would be lessened to a drastic degree . . . That
would circumvent the high bar Congress is presumed to have chosen:
the clear and convincing standard." Id. at
9-11.
Besides the dichotomy of infringement and invalidity, the Court
also noted that there are "practical reasons not to create a
defense based on a good-faith belief in invalidity" given that
a defendant can file a declaratory judgment action, seek an
inter partes review, seek ex parte reexamination,
or assert an affirmative defense, which if successful on
invalidity, will result in immunity from liability. Id. at
12. Plus, a court's power to sanction attorneys for frivolous
lawsuits or award attorney's fees, "militate in favor of
maintaining the separation expressed through the Patent Act between
infringement and validity." Id. at 14.
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