Commil USA, LLC v. Cisco Sys., Inc.,— U.S. (May 26, 2015) (6-2) (Kennedy (majority with Ginsburg, Alito, Sotomayor, and Kagan, with Thomas joining except for the rebuke of the Commil/government argument) and Scalia (dissent with Roberts)) (Breyer did not take part)
Supreme Court holds that an accused inducer’s belief that a patent’s claims are invalid is not relevant to the mens rea requirement for induced infringement, even though its belief that the claims are not infringed can be relevant. As an initial matter, the majority declined the invitation from Commil and the government to hold that the accused inducer’s beliefs about its liability are not relevant at all — reasoning that its decision in Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. (2011) prevents such a result. On the main issue, the majority’s four main points and the dissent’s responses are as follows:
Majority: Infringement and validity are distinct concepts in the Patent Act.
Dissent: “Infringing a patent means invading a patentee’s exclusive right to practice his claimed invention. It follows, as night the day, that only valid patents can be infringed. To talk of infringing an invalid patent is to talk nonsense.”
Majority: “[I]f belief in invalidity were a defense to induced infringement, the force of [the] presumption [of validity] would be lessened to a drastic degree, for a defendant could prevail if he proved he reasonably believed the patent was invalid.”
Dissent: “An alleged inducer who succeeds in this defense does not thereby call a patent’s validity into question. He merely avoids liability for a third party’s infringement of a valid patent, in no way undermining the patent’s presumed validity.”
Majority: Invalidity is a defense to liability, not a defense to infringement.
Dissent: “This is an assertion, not an argument … The Court has no answer” for how it is possible to interfere with rights that do not exist.
Majority: Practical reasons: (a) defendants have numerous ways to escape liability from a truly invalid patent, (b) litigation will be unduly burdensome if everyone can cook up this extra defense, (c) a contrary finding would result in multiplication of discovery costs and the issues a jury must resolve. Moreover, there was no assertion here that Commil improperly asserted its patent. Also, this holding is analogous to other areas of the law that find acts to be “intentional” even if the defendant lacked knowledge that the conduct would violate the law, such as tortious interference with contract and trespass.
Dissent: “Ours is not a common-law court … Our task is to interpret the Patent Act, and to decide whether it makes a good-faith belief in a patent’s invalidity defense to induced infringement … I may add, however, that if the desirability of the rule we adopt were a proper consideration, it is by no means clear that the Court’s holding, which increases the in terrorem power of patent trolls, is preferable.
Other things to note about this decision are:
- This holding does not appear to address the use of noninfringement opinions (or other mechanisms by which a defendant could form a belief it does not infringe) to avoid a finding of inducement, or the use of any sort of opinion (noninfringement or invalidity) to avoid a finding of willful infringement.
- Justice Scalia’s mention of “patent trolls” appears to be a justice’s first use of the term in an opinion.
- The majority characterizes the Commil/government position that it rejects as creating liability “even if the defendant reads the patent’s claims differently from the plaintiff, and that reading is reasonable.” Slip Op. at 9. The majority then says: “Global-Tech requires more. It requires proof that the defendant knew the acts were infringing. And this Court’s opinion was clear in rejecting any lesser mental state as the standard.” One might ask whether, and how, parties could use such statements in future litigation.