Commil USA, LLC v. Cisco Systems, Inc.
737 F.3d 699
Fed. Cir.2013Background
- Plaintiff-appellee filed a petition for rehearing en banc after a panel decision; a response was invited and filed by defendant-appellant.
- The petition for rehearing en banc was referred to a poll of circuit judges, which requested, then failed.
- The court denied panel rehearing and rehearing en banc; the mandate will issue November 1, 2013.
- The underlying dispute concerns induced infringement liability under 35 U.S.C. § 271(b) and whether a good-faith belief of invalidity can negate intent.
- The Commil majority held that a good-faith belief of invalidity may negate the requisite intent for induced infringement; the dissent challenges this holding as contrary to law and precedent.
- The dissent argues that infringement and validity are separate issues and that invalidity cannot immunize inducement liability.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does a good-faith belief of invalidity negate inducement liability under §271(b)? | Commil allows negation based on invalidity belief. | Inducement liability depends on infringement, not invalidity beliefs. | En banc denial leaves panel rule in place. |
| Should invalidity be imported into the induced infringement analysis as part of intent? | Invalidity belief should influence intent. | Invalidity is a separate issue; it should not affect inducement intent. | En banc denial preserves the panel approach that blends invalidity into intent. |
| Are infringement and invalidity properly treated as separate issues in induced infringement law? | The panel treats them as interrelated via intent to induce. | Infringement and validity are distinct; invalidity can negate patent rights but not induce liability. | En banc denial maintains the panel’s integrated view. |
Key Cases Cited
- Commil USA, LLC v. Cisco Sys., Inc., 720 F.3d 1361 (Fed. Cir. 2013) (premised invalidity belief as negating inducement intent)
- Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 766 (Supreme Court 2011) (knowledge of infringement required for induced infringement)
- Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301 (Fed. Cir. 2012) (all steps of a claimed method must be performed for induced infringement)
- Medtronic, Inc. v. Cardiac Pacemakers, Inc., 721 F.2d 1563 (Fed. Cir. 1983) (invalidity does not automatically determine infringement liability; separate issues)
- Pandrol USA LP v. Airboss Ry. Prods., Inc., 320 F.3d 1354 (Fed. Cir. 2003) (infringement and invalidity are distinct considerations)
- Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524 (Fed. Cir. 1987) (invalid claims cannot be infringed; nuanced distinction between issues)