In Commil USA, LLC v. Cisco Systems, the US Supreme Court held that a defendant's belief that a patent is invalid is not a defense to a claim it induced infringement.
Commil USA, LLC, the owner of a patent relating to a method of implementing wireless networks, had sued Cisco Systems, Inc., for making and selling wireless networking equipment that directly infringed and for inducing others to infringe the patent by selling them infringing equipment.
Cisco was found liable for direct and induced infringement, but had raised the defense to induced infringement that it had a good-faith belief Commil’s patent was invalid. The trial court ruled evidence to show the belief inadmissible. On appeal, the Federal Circuit stated the trial court erred in excluding Cisco’s evidence of its good-faith belief.
The Supreme Court has had a pattern of reversing the Federal Circuit in recent years, and this case was no different. It held a defendant’s belief that a patent is invalid is not a defense to a claim of induced infringement. Induced infringement under 35 U. S. C. §271(b) only applies when a defendant knew of the patent and that the induced acts constitute infringement. Similarly, contributory infringement under 35 USC §271(c) requires knowledge of the patent and knowledge of patent infringement.
This contrasts with direct infringement under 35 USC §271(a), which is a matter of strict liability where the defendant’s mental state is irrelevant.
The Supreme Court reminded that Global-Tech requires knowledge that the induced acts constitute patent infringement and that the defendant's actions demonstrated it knew it would be causing customers to infringe patent.
The Supreme Court said induced infringement and validity are separate defenses, and said it was unwilling to undermine the presumption that a patent is valid under 35 USC §282(a) proof otherwise must rebut the presumption by clear and convincing evidence. See Microsoft Corp. v. i4i Ltd. Partnership.
The Supreme Court noted accused inducers who believe a patent is invalid can seek ex parte reexamination of the patent by the USPTO and that district courts can dissuade frivolous suits by sanctioning attorneys, e.g., under Rule 11 or awarding attorney fees under 35 USC 285.
Copyright © 2015 Robert Moll. All rights reserved.
