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Commil USA v. Cisco Systems - Induced Infringement In For Clarification

Supreme Court granted cert. to resolve the question of whether or not a defendant’s belief that a patent is invalid is a defense against a charge of inducing infringement. The question appears to rest on Judge Newman’s characterization given in her dissent from the majority opinion (Proust, O’Malley). (A copy of this decision can be found at the end of this post.) However, the majority opinion appears more nuanced to me:

“Under our case law, it is clear that a good-faith belief of non-infringement is relevant evidence that ends to show that an accused infringer lacked the intent required to be held liable for induced infringement.”

I read this as simply stating that the belief can provide evidence of lack of specific intent to induce acts of infringement. The evidence may be “strong,” such as a competent opinion rendered before the offending acts, or “weak,” e.g. the opinion of a non-attorney or a just incompetent opinion. In fact, the majority makes an effort to “spank”‘ Judge Newman in footnote 1:

“In dissent, Judge Newman does little more than construct a straw man and set him ablaze. We certainly do not hold ‘that if the inducer of infringement believes in good faith that the patent is invalid, there can be no liability for induced infringement.’….Nor do we ‘include a belief in patent validity as a criterion as a criterion of infringement.’”

But the panel was split and so was the Fed. Cir. when it denied rehearing en banc. See 720 F3d 1361 (Reyna and Newman wrote dissents joined variously by Rader, Wallach and Lourie.) (A copy of this decision is available at the end of this post.) This is also a case based on statutory construction, a favorite of Justice Scalia, and once the Government weighed in in favor of cert., the die was cast. At least Justice Scalia does not have to revisit the Cloning Manual again.

The Fed. Cir. opinion is Appeal No. 2012-1042 (Fed. Cir., November 5, 2014), reversing the district court’s finding that Cisco induced infringement of US Pat. No. 6430395, involving “protocols” used by mobile devices. Cisco argued that an erroneous jury instruction allowed the jury to find inducement based on simple negligence, and the panel agreed.


Rehearing 720 F3d 1361



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