In an article entitled “Avoid Inducement Liability with an Early Opinion of Counsel,” published in IP360 on March 21, 2014, it was recommended that potential defendants obtain an early opinion of counsel challenging, if possible, the validity of any patents that could be asserted against them under § 271(b). This suggestion was based on the Federal Circuit’s decision in Commil USA, LLC. V. Cisco Systems, Inc., 720 F.3d 1361 (Fed. Cir. 2013), in which the court held that a good faith belief that an asserted patent is invalid could negate the intent requirement for induced infringement. The plaintiff in this controversial decision filed for certiorari. On October 16, 2014, the U.S. government filed an amicus curiae brief urging the Supreme Court to grant cert. In its brief, the government, citing the advice in the article, states:
Accused inducers are likely to raise the new defense in most, if not all, cases. Indeed, patent practitioners are already advising their clients that, when they are notified by a patent holder that they may be inducing infringement, they should quickly obtain an “opinion of counsel” to support a claim of a good-faith belief in invalidity, because such an opinion “can be particularly helpful” in “avoid[ing] inducement liability.” E.g., Brian D. Coggio, Avoid Inducement Liability With Early Opinion Of Counsel (Mar. 21, 2014).
The government’s brief can be found at:
Practitioners should follow the case closely as the denial of cert will reinforce the use of such opinions, while a grant of cert, followed by a reversal, will negate the worth of these opinions as to inducement.