On May 26, 2015, the United States Supreme Court decided Commil USA, LLC v. Cisco Systems, Inc., a case that dealt with inducement to infringe. More specifically, the issue considered by the Supreme Court was whether a good faith belief of patent invalidity is a defense to a claim of induced infringement. In a 6-2 decision written by Justice Kennedy, the Supreme Court ruled that belief of invalidity is not a defense to a claim of induced infringement.
Justice Kennedy started his substantive analysis with a discussion of direct infringement, which was joined by Justices Ginsburg, Alito, Sotomayor and Kagan. Justice Thomas, who joined in the majority with respect to Parts II-B and III, did not join the majority relative to the background discussion. Justice Thomas did not write a separate opinion so we can’t know for sure, but it seems that Thomas chose not to join parts of the decision that were historical in nature (Part I) and the part of the decision where the majority discussed substantive legal issues not specifically germane to the issue presented.
Moving beyond direct infringement being a strict liability offense, and inducement requiring direct infringement, Justice Kennedy ultimately reached the question presented, namely whether a good faith belief of patent invalidity is a defense to a claim of induced infringement. Kennedy explained: “[B]ecause infringement and validity are separate issues under the Act, belief regarding validity cannot negate the scienter required under §271(b).” Kennedy concluded: “Were this Court to interpret §271(b) as permitting a defense of belief in invalidity, it would conflate the issues of infringement and validity.”
Kennedy seemed sympathetic to those who argue that an invalid patent cannot be infringed, which seems to make common sense. But he went on to explain that logic and semantics sometimes must give way to interpretation of an otherwise clear statutory framework:
[T]he questions courts must address when interpreting and implementing the statutory framework require a determination of the procedures and sequences that the parties must follow to prove the act of wrongful inducement and any related issues of patent validity. “Validity and infringement are distinct issues, bearing different burdens, different presumptions, and different evidence.” 720 F. 3d, at 1374 (opinion of Newman, J.). To be sure, if at the end of the day, an act that would have been an infringement or an inducement to infringe pertains to a patent that is shown to be invalid, there is no patent to be infringed. But the allocation of the burden to persuade on these questions, and the timing for the presentations of the relevant arguments, are concerns of central relevance to the orderly administration of the patent system.
In addition to the statutory language that Kennedy found clearly on point, he explained that there were also several practical reasons why a good faith defense should not be allowed. For example, if someone believes that a patent is invalid, they should file a declaratory judgment action (assuming they have standing) or could file a petition for inter partes review with the Patent Trial and Appeal Board (PTAB).
Kennedy also specifically explained that the Court is mindful of abusive litigation tactics employed by so-called patent trolls. Raising the issue seemed wholly out of place and a bit odd given that Kennedy also quickly explained that in this case the parties raised no issue of frivolity. The issue of patent trolls must be weighing on the Court very heavily for it to be inserted by Kennedy in a decision where no one was alleged to have been a patent troll.
Recently, I had the opportunity to sit down with Paul Michel, who we in the patent community know as the former Chief Judge of the United States Court of Appeals for the Federal Circuit. When Judge Michel stepped down as Chief Judge and retired several years ago, he told me that he decided to retire so he could say what needed to be said on behalf of the patent system, something he felt he couldn’t do while a member of the federal judiciary. Judge Michel has been true to his promise. He keeps an active schedule.
Judge Michel has been generous with his time over the past several years, and I have interviewed him on a number of topics. Most recently we discussed the Supreme Court’s patent decisions during the October 2013 term, spending most of our discussion on Alice v. CLS Bank.
Below are the highlights of my interview with Judge Michel. If you would like to read the entire interview, which lasted for approximately one hour and spans over 9,000 words, please see: Judge Michel says Alice Decision ‘will create total chaos’.
Despite what the United States Patent and Trademark Office suggested in their initial guidance to patent examiners, the Supreme Court’s decision in Alice v. CLS Bank has substantially changed the prosecution landscape for computer implemented inventions (i.e., software).
At least initially, the USPTO guidance to examiners seemed extremely patentee friendly. In a memo to the patent examining corps, the USPTO explained that the reason Alice’s claims were determined to be patent ineligible was because “the generically-recited computers in the claims add nothing of substance to the underlying abstract idea.” The USPTO then went on to point out to patent examiners that there is no new category of innovation that is patent ineligible, nor is there any new or special requirements for the eligibility of either software or business methods. Deputy Commissioner for Patent Examination Policy Andrew Hirshfeld explained: “Notably, Alice Corp. neither creates a per se excluded category of subject matter, such as software or business methods, nor imposes any special requirements for eligibility of software or business methods.”
Hirshfeld also explained that there is now a slight change in the way applications are to be examined when claims involve abstract ideas. Essentially, it was said, Alice stands for the proposition that the same analysis should be used for all types of judicial exceptions and the same analysis should be used for all categories of invention. Still, even recognizing this shift in analysis, Hirshfeld told examiners: “[T]he basic inquiries to determine subject matter eligibility remain the same as explained in MPEP 2106(I).” (emphasis added). Therefore, this initial guidance clearly took the position that nothing has changed from a substantive law point of view as far as the USPTO was concerned.
The United States Supreme Court recently issued two much-anticipated decisions on fee shifting in patent litigation. While any cases issued by the Supreme Court are important and relevant, these two decisions have the potential to significantly impact pending patent legislation in Congress. Fee shifting has been articulated as one of the chief driving forces for more patent legislation so quickly after the massive America Invents Act (AIA) changes.
The decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc., was the primary decision because the Court explained that the ruling formed the basis of their decision in Highmark, Inc. v. Allcare Health Management System, Inc. In other words, the Supreme Court decided Octane Fitness and then applied that decision, together with the new law, to resolve Highmark.
In a nutshell, with Octane Fitness, the Supreme Court changed the law as previously announced by the Federal Circuit to make it easier for district courts to sanction plaintiffs for bringing meritless patent infringement suits, while Highmark makes it more difficult for the Federal Circuit to reverse district court decisions under the statute. Both cases were closely watched by both the private sector and Congress, which has been pursuing efforts to quash the perceived problem of patent cases filed by non-practicing entities.
On Monday, March 31, 2014, the United States Supreme Court held oral arguments in the much-anticipated software battle between patentee Alice Corporation, the petitioner, and CLS Bank, the respondent who was victorious below thanks to an equally divided Federal Circuit.
Oral arguments are but one piece of the overall puzzle, so we can easily make too much of their importance, but they are the only way the concerned public can see behind the curtain at the Supreme Court. By many accounts, oral arguments are the least significant piece of the puzzle with many, if not most, Justices relying most heavily on the briefs. Indeed, during oral argument, Justice Breyer specifically stated that he had read each of the amici briefs, which seems a near herculean task given the number of other cases the Supreme Court considers and the sheer volume of briefs filed in this case.
Even with oral arguments being less important than they may seem, there will be all kinds of attempts to predict what the likely outcome will be based on this sneak peek. Of course, it is impossible to know how a Justice will decide based on the questions asked during oral argument. Case in point — did anyone think the Chief Justice would rule in favor of Obamacare? But for now, the oral argument transcript is all we have to rely on. So with that in mind, here are three things that piqued my interest during the oral arguments.