COMMIL USA, LLC, Plaintiff-Appellee, v. CISCO SYSTEMS, INC., Defendant-Appellant.
No. 2012-1042
United States Court of Appeals, Federal Circuit.
Oct. 25, 2013.
III.
To summarize, I dissent to the denial of en banc review because I am concerned about the potential implications of the panel opinion. It lacks limiting principles to such an extent that I fear it could be read to bar federal courts from considering any tort or constitutional claims arising during a search or an аrrest, so long as the government claims it is tangentially related to the decision to commence removal proceedings. It does not take a particularly active imagination to envision the types of law enforcement abuse that could be shielded from federal judicial oversight as a result of this decision. See Webster v. Doe, 486 U.S. 592, 603, 108 S.Ct. 2047, 2053, 100 L.Ed.2d 632 (1988) (warning that serious constitutional questions would arise if a “federal statute were construed to deny any judicial forum for a colorable constitutional claim“).
At a minimum, those who come to our federal courts to claim their rights under our Constitution should have a more thorough explanation about why Article III judges are barred from hearing even valid claims. We can and should do better.
Mark S. Werbner, Sayles Werbner, P.C., of Dallas, TX, filed a petition for rehearing en banc for plaintiff-appellee. With him on the petition were Richard A. Sayles and Mark D. Strachan. Of counsel on the petition werе Leslie V. Payne, Nathan J. Davis and Miranda Y. Jones, Heim, Payne & Chorush, of Houston, TX.
William F. Lee, Wilmer Cutler Pickering Hale and Dorr LLP, of Boston, MA, filed a response to the petition for defendant-appellant. With him on the response were Mark C. Fleming, Jonathan W. Andron, and Felicia H. Ellsworth; and William G. McElwain, of Washington, DC. Of counsel on the respоnse were Henry B. Gutman, Simpson Thacher & Bartlett LLP, of New York, NY; and Jeffrey E. Ostrow, Harrison J. Frahn, IV, Patrick E. King, and Jonathan Sanders, of Palo Alto, CA.
Before RADER, Chief Judge, NEWMAN, LOURIE, DYK, PROST, MOORE, O‘MALLEY, REYNA, WALLACH, TARANTO, and CHEN, Circuit Judges.1
NEWMAN, Circuit Judge, with whom RADER, Chief Judge, REYNA and WALLACH, Circuit Judges, join, dissenting from the denial of the petition for rehearing en banc.
ORDER
ON PETITION FOR REHEARING EN BANC
PER CURIAM.
A petition for rehearing en banc was filed by plaintiff-appellee, and a response thereto was invited by the court and filed by defendant-appellant. The petition for rehearing en banc was first referred as a petition for rehearing to the panel that heard the appeal, and thereafter the petition for rehearing en banc and response were referred to the circuit judges who are authorized to request a poll of whether to rehear the appeal en banc. A poll was requested, taken, and failed.
Upon consideration thereof,
IT IS ORDERED THAT:
(1) The pеtition of plaintiff-appellee for panel rehearing is denied.
(2) The petition of plaintiff-appellee for rehearing en banc is denied.
(3) The mandate of the court will issue on November 1, 2013.
REYNA, Circuit Judge, with whom RADER, Chief Judge, and NEWMAN, LOURIE and WALLACH, Circuit Judges, join, dissenting from the denial of the petition for rehearing en banc.
The Commil majority established a substantive, precedential change in patent law by expressly “hold[ing] 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). Its analysis may be summed by its expressed view that because “[i]t is axiomatic that one cannot infringe an invalid patent” there is “no principled distinction between a good-faith belief of invalidity and a good-faith belief of non-infringement for the purpose of whether a defendant possessed the specific intent to induce infringement of a patent.” Id.
By holding that a good faith belief in the invalidity of a patent may negate the requisite intent for induced infringement, the two-judge Commil majority created a new noninfringement defense to induced infringement that is premised on the accused infringer‘s belief of invalidity. As Judge Newman aptly points out in her dissent, “This absolution applies, according to the panel majority, although the pаtent receives the presumption of validity, and validity is sustained in litigations.” (Newman, J., dissenting from the denial of the petition for rehearing en banc, at 1.)
Because I believe the Commil majority opinion is without foundation in law and precedent, and for the reasons stated below, I respectfully dissent from the vote taken of the court to not conduct an en banc review of the majority opinion in Commil.
I.
My primary dispute with the majority holding is that it wrongly rearranges the legal foundation that underpins the enforceability of valid patents and the finding of liability for infringement.
First, the induced infringement statute states simply that “[w]hoever actively in-
The term “infringement” is used consistently throughout
The legislative history explains that the language of
II.
Second, infringement and invalidity are separate issues under the patent code and our precedent. This is not controversial. We have “long recognized that patent infringement and invalidity are separate and distinct issues.” Pandrol USA, LP v. Airboss Ry. Prods., Inc., 320 F.3d 1354, 1365 (Fed.Cir.2003). This distinction is further reflected in the organization of the patent code, which places the issues of infringement and invalidity in separate “Parts.” Compare
Given this, there is no reasonable basis to impute questions of invalidity or liability
Despite that “Supreme Court precedent and our cases make clear that patent infringement and pаtent validity are treated as separate issues,” Pandrol, 320 F.3d at 1365, the Commil majority nevertheless imputes questions of invalidity into induced infringement under the guise of “intent.” It attempts to justify this departure from controlling precedent on the premise that “[i]t is axiomatic that one cannot infringe an invalid patent.” Commil, 720 F.3d at 1368. But this “axiom” is materially wrong in the рresent context and does not withstand scrutiny in view of controlling precedent. See, e.g., Medtronic, 721 F.2d at 1583. A more accurate statement of our precedent is that liability for patent infringement depends on an infringed claim being valid and enforceable; that is, one cannot be liable for infringement of an invalid pаtent.
III.
Third, the Commil majority holding wrongly conflates the defense of noninfringement with the defense of invalidity. “An important limitation on the scope of induced infringement is that inducement gives rise to liability only if the inducement leads to actual infringement.” Akamai, 692 F.3d at 1308. The Commil majority expands the inquiry regarding noninfringement to include invalidity on grounds that it “see[s] no principled distinction between a good-faith belief of invalidity and a good-faith belief of non-infringement for the purpose of whether a defendant possessed the specific intent to induce infringement of a patent.” Commil, 720 F.3d at 1368. This statement ignores the statutorily-mandated presumption of validity, see
Conflating infringement and invalidity also unnecessarily complicates the induced infringement inquiry. In this regard, infringement and non-infringement are opposite sides of the same coin whereas infringement and invalidity are altogether entirely different coins. The intent element of
*
There exists another axiom of more universal application that is appropriate here: “if it‘s not broken, don‘t fix it.” The Commil majority has strained to fix current law without ever showing exactly what is broken, and its fix has been to create an entirely new infringement defense, a new rule of law.
In addition, the majority does not instruct the lower courts how they are to apply the fix. Is the new rule a question of fact? Is it a question of law? Is it a question of lаw with underlying factual basis? Should the question of good faith belief of invalidity be tried along with the invalidity issues, or perhaps before any other issues are heard given its determinative effect on the outcome of the case?
A grave concern that I have with the new rule is that it fundamentally changes the operаting landscape, much like waking up and unexpectedly finding that the sky is now green. The new rule is a powerful tool in patent litigation in that it establishes an escape hatch from liability of infringement that is not now in the statute. This has a compromising effect on the only axiom that we should all observe, and that is issued patents are presumed valid.
NEWMAN, Circuit Judge, with whom RADER, Chief Judge, REYNA and WALLACH, Circuit Judges, join, dissenting from the denial of the petition for rehearing en banc.
By decision issued June 25, 2013, a split panel announced a change in the law of induced infringement, creating a new rule of law whereby an adjudged inducer of infringement is absolved of liability for infringement if the infringer had a “good faith belief” that the patent it infringed was invalid. This absolution applies, according to the panel majority, although the patent has a statutory presumption of validity, and validity of the patent is litigated and sustained. I explained, in my dissenting opinion, why this position is contrary to law and precedent. And I took some comfort from the protocol that a panel cannot change the law established by decisions of the court; only the en banc court can do so.
Indeed, it is not “axiomatic that one cannot infringe an invalid patent” as the majority opinion states. Precedent is contrary. See Medtronic, Inc. v. Cardiac Pacemakers, Inc., 721 F.2d 1563, 1583 (Fed.Cir.1983) (“Though an invalid claim cannot give rise to liability for infringement, whether it is infringed is an entirely separate question capable of determination without regard to its validity.“); Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1535 (Fed.Cir.1987) (“The single instruction to the jury that invalid claims cannot be infringed (a nonsense statement), one of many on supposed general рrinciples of patent law, does not operate to convert the interrogatories on infringement into general verdicts which subsumed all of Spectra‘s invalidity defenses, including best mode.“). If the court now wishes to change this law, it must be done en banc. It disserves the public, and diminishes the court, to continue to issue conflicting statements.
Now, however, the full court‘s majority refusal of en banc review of the panel‘s ruling adds uncertainty to the law and its application. Investors, competitors, and trial courts cannot be confident as to the
To compound thе inequity, here the panel majority, on remanding for retrial of infringement with the defense that the infringer believed the patent to be invalid, nonetheless does not permit retrial of validity. In the posture of the remand, the prior jury verdict of validity is the law-of-the-case. However, the issues of infringement and validity are intеrwoven in the new defense of subjective “belief“, and the restricted remand procedure can impart “confusion and uncertainty, which would amount to a denial of a fair trial.” Anderson v. Siemens Corp., 335 F.3d 466, 475-76 (5th Cir.2003). It is only fair that the new jury, at a new trial for determination of this “belief“, receives full evidence of the premises. At a minimum, the panеl‘s instructions for limited retrial should receive en banc review.
Thus I must, respectfully, dissent from denial of the request for rehearing en banc.
FUTUREWEI TECHNOLOGIES, INC., and Huawei Device USA, Inc., Plaintiffs-Appellants, v. ACACIA RESEARCH CORPORATION, Defendant-Appellee, and Access Co., Ltd., Defendant-Appellee, and Smartphone Technologies, LLC, Defendant-Appellee.
No. 2013-1090.
United States Court of Appeals, Federal Circuit.
Dec. 3, 2013.