{"id":211,"date":"2015-05-26T14:21:24","date_gmt":"2015-05-26T18:21:24","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=211"},"modified":"2015-05-28T16:01:55","modified_gmt":"2015-05-28T20:01:55","slug":"just-because-you-believe-a-patent-is-invalid-doesnt-mean-you-can-believe-you-dont-infringe-it","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=211","title":{"rendered":"Just Because You Believe A Patent is Invalid Doesn’t Mean You Can Believe You Don’t Infringe It"},"content":{"rendered":"

In <\/em>a 6-2 decision Commil USA, LLC v. Cisco Systems, Inc, <\/em>the Supreme Court held that a good-faith belief that a patent is invalid is not a defense to inducement of patent infringement under 35 U.S.C. \u00a7 271(b).<\/p>\n

\u00a0Commil USA, which holds a patent for a method of implementing wireless networks, sued respondent Cisco Systems, a maker and seller of wireless networking equipment. A jury found Cisco liable for both directly infringing Commil\u2019s patent as well as \u201cinducing\u201d others to infringe by selling them the infringing equipment. \u00a0The Supreme Court had previously held that for liability for inducement under 271(b) to attach, the defendant must know that its induced acts are infringing, that is, inducement liability requires knowledge of patent infringement. See, e.g.<\/em>, Global-Tech Appliances v. SEB S.A.<\/em>, 563 U.S. __, __ (2011); Aro Mfg. Co. v. Convertible Top Replacement Co.<\/em>, 377 U.S. 476, 488 (1964).<\/p>\n

The District Court had instructed the jury that it could find inducement if Cisco \u201cknew or should have known that its actions would induce actual infringement,\u201d and the jury found for Commil on the induced infringement charge. The Federal Circuit reversed the District Court in part, holding that Cisco should have been allowed to present evidence of its good-faith belief that Commil\u2019s patent was invalid.\u00a0 The Federal Circuit reasoned that one cannot infringe an invalid patent, and therefore a good faith belief that a patent is invalid translated into a good faith believe that the patent is not infringed,<\/p>\n

The Supreme Court started with the premise that liability for inducing infringement attaches only if the defendant knew of the patent and that the induced acts constitute patent infringement.\u00a0 The Supreme Court provided four arguments why belief about the validity does not negate the scienter required by 271(b):\u00a0 First, the court found that when infringement is the issue the validity of the patent is not the question to be confronted, noting that a declaratory judgment of invalidity presents an independent claim from the patentee\u2019s charge of infringement, and that issues of validity and infringement are in separate parts of the patent act.\u00a0 Second, the Supreme Court said that allowing a defense of invalidity would \u201cundermine\u201d the statutory presumption of validity. Third, the Supreme Court asserted that invalidity is not a defense to infringement, it is a defense to liability, and thus it cannot negate the scienter required for inducement.\u00a0 Fourth and finally, the Supreme Court identified \u201cpractical reasons\u201d not to create a defense based upon the good faith belief of invalidity, including the fact that there are various ways to obtain an invalidity ruling, and recognizing the defense would render litigation more burdensome, and because it is harder to determine validity, it would be easier to prevail on a defense based upon belief of invalidity, and it would burden the jury to separate issues of invalidity from belief of invalidity.<\/p>\n

The dissent by Justice Scalia started with the observation that anyone with a good-faith belief in a patent\u2019s invalidity necessarily believes that patent counsel cannot be infringed.\u00a0 The dissent then went on to address the majority\u2019s four arguments, observing that while it was true that the patent act treats infringement separately from validity, it is irrelevant.\u00a0 Recognizing infringement requires validity is entirely consistent with their separate nature.\u00a0 The dissent next observed that the presumption is not weakened by treating a good-faith belief as a defense.\u00a0 While if successful the defense avoids liability, it in no way undermines the patent\u2019s presumed validity.\u00a0 The dissent called \u201cinvalidity is not a defense to infringement, it is a defense to liability\u201d as a mere assertion, asserting instead that an invalid patent confers no rights.\u00a0 Finally, the dissent rejected the majority\u2019s \u201cpractical reasons\u201d \u00a0not to create a defense to inducement\u00a0 as flawed because it wasn\u2019t up to the Court to create or not create defenses, but to interpret the patent act.<\/p>\n

\u00a0A good faith, but incorrect, belief that the patent is invalid is no defense to a claim for inducement.\u00a0 However a good faith, but incorrect belief that the patent is not infringed is a defense to a claim of inducement. But non-infringement depends upon claim construction, which in turn is pressured by validity considerations.\u00a0 Does an opinion that the claims are not infringed because they cannot be validly construed to cover the accused device protect the manufacturer from a claim of inducement?\u00a0 After Commil <\/em>a business without a clear non-infringement position should consider preemptively test the validity of the patent, or risk subsequently being liable for inducement if the patent is later found not invalid.<\/p>\n","protected":false},"excerpt":{"rendered":"

In a 6-2 decision Commil USA, LLC v. Cisco Systems, Inc, the Supreme Court held that a good-faith belief that a patent is invalid is not a defense to inducement of patent infringement under 35 U.S.C. \u00a7 271(b). \u00a0Commil USA, … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[6],"tags":[],"class_list":["post-211","post","type-post","status-publish","format-standard","hentry","category-patent-law"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/211","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=211"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/211\/revisions"}],"predecessor-version":[{"id":212,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/211\/revisions\/212"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=211"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=211"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=211"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}