It has now been more than a year since the Federal Circuit rendered its decision in the Commil case providing a defense to the intent prong for active inducement of patent claims. At the time of the decision there were a number of articles touting the “new” defense and opining that it would have a large impact on patent cases. A current search of the case law, however, shows that there have been fewer than 10 court decisions post-Commil that reference this defense. Practitioners defending against claims of induced infringement would do well to reacquaint themselves with the Commil defense and to consider whether it could be employed for their cases.

In Commil, the Federal Circuit held that evidence of an accused inducer’s good-faith belief of invalidity may negate the requisite intent for induced infringement. Commil USA, LLC v. Cisco Sys., Inc., 720 F.3d 1361, 1368 (Fed. Cir. 2013). Accordingly, one could be aware of a patent and induce another to perform the steps of the patent claim, but have a good-faith belief that the patent is not valid, which may negate the specific intent to encourage another’s infringement that is required for induced infringement. Id. The Federal Circuit did provide a caveat that this is not to say that such evidence precludes a finding of induced infringement, but rather it is evidence that should be considered by the fact-finder in determining whether an accused party knew that the induced acts constitute patent infringement. Id. at 1368-69.

The Federal Circuit decision was a divided panel opinion, and rehearing en banc was denied. A petition to the Supreme Court for the Commil case is currently awaiting conference. The question presented in the petition is “Whether the Federal Circuit erred in holding that a defendant’s belief that a patent is invalid is a defense to induced infringement under 35 U.S.C. § 271(b).” The Government, on invitation of the Supreme Court, has filed a brief recommending grant of certiorari.

Two recent district court opinions indicate that they are willing to allow evidence to be presented for the Commil defense. Judge Robinson in the District of Delaware recently issued an order in which she “recognize[s] that, in the context of induced infringement (as in the context of willful infringement), evidence such as opinions of counsel may reflect a good faith belief on the part of an accused infringer as to the invalidity of an asserted patent, thus negating the specific intent required for induced infringement.” Carrier Corp. v. Goodman Global, Inc., No. 12-930-SLR (D. Del. Aug. 28, 2014). A similar decision from the Western District of Wisconsin indicated that evidence could be provided to the jury to have the jury “assess whether defendants’ invalidity defenses were held in good faith and whether they negate the specific intent to induce infringement.” Ultratec, Inc. v. Sorenson Communs., Inc., 2014 U.S. Dist. LEXIS 120134, at *113 (W.D. Wis. Aug. 28, 2014).

In light of the above recent cases, in cases where infringement claims are based on allegations of induced infringement, practitioners may consider having their clients obtain opinions of invalidity early in the case and make sure that there is proof of good-faith reliance on those opinions. Similarly, if an inter partes review petition is prepared for a patent-in-suit, practitioners may consider obtaining proof that their clients have formed a good-faith reliance on the invalidity positions in the inter partes review. Negating the intent for induced infringement could be a powerful defense in patent cases, especially where the only allegations of infringement are for induced infringement after the time of filing of the complaint and where the expiration date of the patent is prior to the expected date of trial.