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.

Tags: induced infringement, induced patent infringement, inducement, infringement, patent, patents, SCOTUS, Supreme Court

This entry was posted on Thursday, June 25th, 2015 at 16:56 and is filed under Patent Issues, Patent Litigation, posts, Supreme Court Cases. You can follow any responses to this entry through the RSS 2.0 feed. You can skip to the end and leave a response. Pinging is currently not allowed.