Commil USA, LLC v. Cisco Systems, Inc.

The patent case between Commil and Cisco, a case that made new law at the Supreme Court on the issue of the intent requirement in cases of induced infringement allegations, came to an end with a whimper on remand back to the Federal Circuit. After trial, retrial, Federal Circuit appeal, and Supreme Court appeal, the U.S. Court of Appeals for the Federal Circuit has found no infringement by the defendant Cisco, largely based on the Court’s agreement with the district court claim construction ruling. Commil USA, LLC v. Cisco Systems, Inc., Case No. 12-1042 (Fed. Cir., Dec. 28, 2015) (Prost, C.J.).

Commil sued Cisco eight years ago on a patent covering a method for faster and more reliable handoffs of a mobile device as it moves throughout a mobile network. At trial, the jury found that Commil’s patent was valid, that Cisco was liable for direct infringement, but not induced infringement, and awarded Commil $3.7 million in damages. Commil requested and received a retrial on induced infringement and damages, and the second jury entered a verdict for Commil on induced infringement and awarded $63.7 million in damages.

Cisco appealed, raising a number of issues. In that appeal the Federal Circuit remanded the case without reaching Cisco’s non-infringement arguments. While the case was on remand back to the district court, Commil sought certiorari on the limited question of whether Cisco’s good faith belief that Commil’s patent is invalid is a defense to an allegation of induced infringement.

The case then made headlines when the Supreme Court granted certiorari and ultimately reversed the Federal Circuit, ruling that a good faith belief that a patent is invalid is not a defense to induced infringement (IP Update, Vol. 18, No. 6), a ruling highly favorable for Commil and patentees in general.

But its success at the Supreme Court ultimately did not help Commil on remand. Back at the Federal Circuit, the Court addressed the non-infringement arguments it did not reach in the original appeal, this time concluding that neither Cisco nor its customers directly infringed Commil’s patent.

The Federal Circuit decision turned on the district court’s construction of a claimed “running” step, which the lower court construed as requiring a base station to run “a copy” of a low-level protocol supporting a connection for a single mobile device. Cisco argued its system could not infringe because it uses a single copy of the protocol for all the connected mobile devices, not one copy for each, as required by district court claim construction. Commil, using expert testimony that Cisco’s platform tracked state information for each device, argued that the system used a process that is equivalent to having a copy of the protocol for each device. The Federal Circuit disagreed, finding that there was not substantial evidence to support the jury’s finding that Cisco’s devices, when used, perform the “running” step of the asserted claims.