Commil United States, LLC v. Cisco Sys., Inc.
135 S. Ct. 1920
| SCOTUS | 2015Background
- Commil sued Cisco alleging direct infringement of a wireless-networking patent and induced infringement by selling equipment that caused customers to infringe.
- First trial: jury found the patent valid and direct infringement; found no inducement. District Court granted a new trial on inducement due to counsel misconduct.
- Before the second trial Cisco sought PTO reexamination; the PTO confirmed the patent.
- At the second trial the District Court excluded Cisco’s proffered evidence that it held a good-faith belief the patent was invalid and instructed the jury on a negligence-like standard for inducement; jury found inducement and awarded $63.7M.
- The Federal Circuit reversed the jury instruction ruling but held that evidence of a defendant’s good-faith belief in invalidity may negate the specific intent required for inducement, and ordered a new trial; the Supreme Court granted certiorari to decide whether belief in invalidity is a defense to induced infringement.
Issues
| Issue | Plaintiff's Argument (Commil) | Defendant's Argument (Cisco) | Held |
|---|---|---|---|
| Whether induced-infringement (§271(b)) requires knowledge that the induced acts are infringing | Inducer need only know of the patent (not necessarily know acts are infringing) | Inducer must know the acts are infringing | Court: Inducement requires knowledge that the induced acts constitute patent infringement (Global‑Tech reaffirmed) |
| Whether a defendant’s good-faith belief that the patent is invalid is a defense to induced infringement | Belief in invalidity is irrelevant; inducement focuses on intent to cause infringement | Good-faith belief of invalidity negates intent to induce infringement | Court: Belief in invalidity is not a defense; scienter element concerns infringement, not validity |
| Whether admitting evidence of belief in invalidity is necessary to prove lack of specific intent to induce | Plaintiff: evidence unnecessary and would conflate validity with infringement | Defendant: such evidence shows lack of intent to cause infringement | Court: Excluding belief-in-invalidity evidence was proper because validity is a separate issue and belief cannot negate scienter under §271(b) |
| Policy: Whether creating a belief-in-invalidity defense is desirable | Plaintiff: not necessary; would undermine patent system | Defendant: avoids exposure to liability when defendant reasonably believes patent invalid | Court: Practical concerns favor keeping validity and infringement separate; accused parties have other remedies (reexamination, DJ actions, PTO proceedings) |
Key Cases Cited
- Global‑Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754 (2011) (induced infringement requires knowledge that the induced acts constitute patent infringement)
- Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476 (1964) (contributory infringement requires knowledge of infringement)
- Cardinal Chemical Co. v. Morton Int’l, Inc., 508 U.S. 83 (1993) (infringement and invalidity are distinct issues; declaratory judgment of invalidity is independent)
- Microsoft Corp. v. i4i Ltd. Partnership, 564 U.S. 91 (2011) (patent validity is presumed and rebuttable only by clear and convincing evidence)
- Jerman v. Carlisle, McNellie, Rini, Kramer & Ulrich, L.P.A., 559 U.S. 573 (2010) (mistake of law generally is not a defense to civil liability)
- Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014) (district courts may award attorney’s fees in exceptional patent cases)
- eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) (commentary on misuse of patents primarily for licensing demands)
- Radio Corp. of America v. Radio Engineering Laboratories, Inc., 293 U.S. 1 (1934) (seminal discussion of patent validity presumption)