Supreme Court Decides Commil USA v. Cisco Systems

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.

Ford opens electric vehicle patents for licensing to competitors

Ford Motor Company has recently announced that it is offering competitors access to its electric vehicle (EV) technology patents, a move the company says is aimed at helping accelerate growth of industry-wide research and development of electrified vehicles.  Ford is also set to hire an additional 200 electrified vehicle engineers this year as the team moves into a newly dedicated facility – Ford Engineering Laboratories – home to Henry Ford’s first labs in Dearborn.

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06.17.15 | Patent Issues, Patent Licensing | Gene Quinn

PATENT Act passes the Senate Judiciary Committee

After a three-hour hearing held by the U.S. Senate Committee on the Judiciary, S.1137, the proposed legislation known as the PATENT Act, was approved to move to the floor of the United States Senate by a 16-4 vote of the Senate committee.

Ahead of the committee’s consideration of the bipartisan Act, Senate Judiciary Committee Chairman Chuck Grassley, Ranking Member Patrick Leahy, and Judiciary Committee members John Cornyn, Chuck Schumer, Orrin Hatch, Mike Lee and Amy Klobuchar released a managers’ amendment, which was approved by the Committee. The managers’  amendment includes technical changes, as well as provisions to address concerns regarding post grant review proceedings.

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06.16.15 | Patent Issues, Patent Reform | Gene Quinn

Recent drone patents focus on avoiding midair collisions

Recently on, we published an article about how Senator Cory Booker (D-NJ) and Senator John Hoeven (R-ND) have teamed up to support bipartisan legislation that seeks to take the first steps to regulate commercial drone use. See Senators Booker, Hoeven draw up bipartisan bill promoting commercial drone useWhenever we cover a story relating to technology we always like to take a look at the recently issued U.S. patents in that particular area to get a sense of what is going on in the industry. With that in mind, we took a look at recent patents granted by the U.S. Patent and Trademark Office in the field of drone technologies.

In this search, we found a fair number of patents being issued to foreign firms, which could be some evidence that drone R&D in other countries might be outpacing those inventions produced by American firms. Read the rest of this entry »

05.29.15 | Patent Issues | Gene Quinn

A Primer on the PATENT Act

The Protecting American Talent and Entrepreneurship (PATENT) Act, introduced on April 30, 2015, by Senator Grassley (R-IA) and Senator Leahy (D-VT), is the Senate version of the Innovation Act in the House. The PATENT Act would establish higher pleading standards for patent infringement complaints, which the sponsors say would give defendants real notice of the claims against them. The bill also contains a controversial “customer stay” provision similar to the one found in the Innovation Act. This could prove to be a huge stumbling block because, the way the provisions are written, even the largest tech companies could move to indefinitely stay patent litigation; they are often themselves consumers (i.e., they have purchased something from another manufacturing company). While the Senate Judiciary Committee’s summary of the PATENT Act says that the “customer stay is available only to those at the end of the supply chain,” like the coffee shop, the language found in the bill is actually far broader in scope. Read the rest of this entry »

05.28.15 | posts | Gene Quinn

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