Lead Opinion
Opinion for the court filed by Circuit Judge PROST.
Opinion concurring-in-part, dissenting-in-part filed by Circuit Judge O’MALLEY.
Cisco Systems, Inc. appeals from the final judgment of the United States District Court for the Eastern District of Texas, which was based on the findings of two separate jury verdicts finding that: Cisco directly and indirectly infringed specified claims of Commil USA, LLC’s U.S. Patent No. 6,430,395 (“'395 patent”); the specified claims of the '395 patent are not invalid as indefinite, for lack of enablement, or as lacking adequate written description; and that Cisco was liable for $63,791,153 in damages as well as prejudgment interest and costs. We find that the district court gave the jury a legally erroneous instruction with respect to indirect infringement. Additionally, we find that Cisco’s evidence of a good-faith belief of invalidity may negate the requisite intent for induced infringement. However, we find that the district court did not err in granting a partial new trial. Thus, we affirm-in-part, vacate-in-part, and remand for further proceedings consistent with this opinion.
I. BACKGROUND
A. The Patent and Acoused Products
In a wireless system, mobile devices such as phones and laptop computers communicate with fixed “base stations” according to standardized procedures that govern the way in which data exchanged between devices is formatted, ordered, maintained, and transmitted. These procedures are referred to as “protocols.” Effective wireless communication requires that the transmitting device and the receiving device follow the same protocol.
The '395 patent relates to a method of providing faster and more reliable han-doffs of mobile devices from one base station to another as a mobile device moves throughout a network area. The '395 patent teaches that the communication protocol is divided based on time sensitivity. The portions of the protocol requiring accurate time synchronization — “real-time capabilities” — are performed at the base station. This part of the protocol is called the “low-level protocol.” Other parts of the protocol that are not time-sensitive comprise the “high-level protocol,” which is performed on another device called a switch. The base station and switch cooperate to handle a connection with a mobile unit. To implement the full communications protocol, the base station runs an instance of the low-level protocol for the connection and the switch runs a corresponding instance of the high-level protocol.
Cisco is a major supplier of WiFi access points and controllers. Commil alleges that certain Cisco access points and controllers infringe claims 1, 4, and 6 of the '395 patent. Claim 1, the patent’s sole independent claim, provides:
In a wireless communication system comprising at least two Base Stations, at least one Switch in communication with the Base Stations, a method of communicating between mobile units and the Base Stations comprising:
dividing a short-range Communication protocol into a low-level protocol for performing tasks that require accurate time synchronization and a highlevel protocol which does not require accurate time synchronization; and
for each connection of a mobile unit with a Base Station, running an instance of the low-level protocol at the Base Station connected with the mobile unit and running an instance of the high-level protocol at the Switch.
B. The District Coukt Prooeedings
A jury trial commenced on May 10, 2010. On May 17, 2010, the jury returned a verdict rejecting Cisco’s invalidity contentions, finding Cisco liable for direct infringement, and awarding Commil $3.7 million in damages. The jury also found that Cisco was not liable for induced infringement. Commil filed a motion for a new trial on the issues of induced infringement and damages, which the court granted on December 29, 2010.
On April 5, 2011, a second trial was held with réspeet to indirect infringement and damages. On April 8, 2011, the jury returned a verdict in favor of Commil on both issues and this time awarded $63.7 million in damages. On September 28, 2011, the district court entered an amended final judgment granting $63.7 million in actual damages, $10.3 million in prejudgment interest, and $17,738 in costs. This appeal followed.
II. Discussion
Cisco appeals the district court decision on several grounds. First, .Cisco contends that an erroneous instruction allowed the jury to find inducement based on mere negligence. Second, Cisco argues that the district court erroneously precluded Cisco from presenting evidence of its good-faith belief of invalidity to show that it lacked the requisite intent to induce infringement of the asserted claims. Third, Cisco argues that the district court abused its discretion in granting a new trial and that the district court violated the Seventh Amendment by granting a new trial on certain issues, but not others. Fourth, Cisco claims the court erred in cqnstruing the term “short-range communication protocol.” Fifth, Cisco argues that there is not substantial evidence to sustain the jury verdict on infringement. Sixth, Cisco contends the claims are indefinite, not enabled, and lacking adequate written description. ' Finally, Cisco objects to the damages award on the grounds that Corn-mil’s royalty basé violates the entire market value rule. We take each of these issues in turn.
A. The Jury InstruotioN
Before the district court and on appeal, Cisco challenged the second trial’s jury instruction on induced infringement. The district court denied Cisco’s motion for a new trial on the jury instruction issue. We review the denial of a motion for a new trial under the law of the regional circuit. Riverwood Int’l Corp. v. R.A. Jones & Co.,
At the second trial, the court instructed the jury that it could find inducement if “Cisco actually intended to cause the acts that constitute direct infringement and that Cisco knew or should have known that its actions would induce actual infringement.” J.A. 6389 (98:24-99:2). The “knew or should have known” language is a verbatim recitation of the standard for showing induced infringement we originally,set forth in Manville Sales Corp. v. Paramount Sys., Inc.,
The Global-Tech Court held that induced infringement “requires knowledge that the induced acts constitute patent infringement.” Id. at 2068. The knowledge requirement of Global-Tech may be satisfied by showing actual knowledge or willful blindness. Id. at 2072. In reaching this conclusion the Court expressly distinguished actual knowledge and willful blindness from recklessness and negligence explaining that:
[A] willfully blind defendant is one who takes deliberate actions to avoid confirming a high probability of wrongdoing ,and who can almost be said to have actually known the critical facts. By contrast, a reckless defendant is one who merely knows of a substantial and unjustified risk of such wrongdoing and a negligent defendant is one who should have known of a similar risk but, in fact, did not.
Id. at 2070-71 (citations omitted). The Court acknowledged that the facts that must be adduced to find willful blindness prevent such a finding on facts that support only recklessness or negligence. Id. Moreover, the Court rejected the standard set forth by this court, in part, because it permitted “a finding of knowledge when there is merely a ‘known risk’ that the induced acts are infringing.” Id. at 2071.
Commil contends" that the jury instruction in this case merely allowed the jury to find knowledge based upon circumstantial evidence. Circumstantial evidence can, of course, support a finding of actual knowledge or willful blindness just as it did in Global-Tech. Id. at 2071-72. The jury instruction in this case, however, was not so limited. While the court did instruct the jury that certain circumstantial evidence could support a finding of inducement, the present jury instruction plainly recites a negligence standard, which taken literally, would allow the jury to find the defendant liable based on mere negligence where knowledge is required. J.A. 6389 (98:19-99:15). Therefore, to the extent our prior case law allowed the finding of induced infringement based on recklessness or negligence, such case law is inconsistent with Global-Tech and no longer good law. It is, therefore, clear that the jury "instruction in this case was erroneous as a matter of law. This finding, however, does not end our inquiry. -
In order to set aside a jury verdict, we must find not only that the jury instruction was legally erroneous, but also that the instruction had a prejudicial effect. Sulzer Textil,
A finding of inducement requires both knowledge of the existence of the patent and “knowledge that the induced acts constitute patent infringement.” Global-Tech,
B. Cisco’s Good-Faith Belief of Invalidity
Cisco further contends that the district court erred in preventing Cisco from presenting evidence during the second trial of its good-faith belief of invalidity to rebut Commil’s allegations of induced infringement. We agree.
Prior to the second trial, Cisco proffered evidence to support its good-faith belief that the '395 patent is invalid. Commil filed k motion in limine to exclude this evidence, which the district’ court granted without written opinion. It is not entirely clear from the record why the district court precluded Cisco from presenting its evidence. However, during a colloquy with Cisco’s counsel at a pretrial hearing, the district court appeared to base its decision on the fact that our precedent indicates that such evidence is relevant where it relates to a good-faith belief of non-infringement, but is silent with respect to invalidity. J.A. 6061-63. It is true, as the district court noted, that we appear to have not previously determined whether a good-faith belief of invalidity may negate the requisite intent for induced infringement. We now hold that it may.
Under our case law, it is clear that a good-faith belief of non-infringement is relevant evidence that tends to show that an
It is axiomatic that one cannot infringe an invalid patent. See, e.g., Prima Tek II, L.L.C. v. Polypap, S.A.R.L.,
We now hold that evidence of an accused inducer’s good-faith belief of invalidity may negate the requisite intent for induced infringement.
C. The Grant Of a Seoond TRIAL
Cisco challenges the district court’s grant of a new trial on two fronts. First, Cisco argues that there was no basis for granting a new trial. Second, Cisco argues that even if a new trial was proper, the partial new trial violated the Seventh Amendment. We discuss these issues se-riatim.
1. The First Trial
The district court proceedings in this case were unusual. Commil is based in Israel and the inventors of the '395 patent are Israeli. Throughout the trial, according to the district court, Cisco’s trial counsel attempted to play upon religious prejudices and ethnic stereotypes.
For instance, during the cross-examination of Jonathan David, a co-owner of Commil who is Jewish, Cisco’s counsel attempted to perpetuate the stereotype of Jewish people as greedy opportunists by asking Mr. David if his cousin was a “bottom-feeder who swim[s] around on the bottom buying people’s houses that they got kicked out of for next to nothing.” J.A. 5823 (139:19-140:1). Later, when Mr. David mentioned dining at a local barbeque restaurant, Cisco’s counsél quipped, “I bet not pork.” J.A. 5825 (146:4-24). Following the pork comment, the court questioned counsel on the relevance of his statement and issued a curative, instruction stating:
Sometimes when a lawyer injects irrelevant information into a case it’s because he perceives a weakness in the merits of his. case. I don’t know whether that’s why it happened in this case, but you can consider that as you’re evaluating the testimony and the evidence in this case.
J.A. 5838 (2:25-3:9).
Despite the potent curative instruction and the court’s clear displeasure, in his closing, counsel again made several irrelevant and prejudicial remarks. Counsel’s behavior reached a new low when he began his closing argument with a reference to the trial of Jesus Christ, stating:
Ladies and Gentlemen of the Jury, you are, in this case, truth-seekers. You are charged with the most important job in this courtroom, and that’s determining the truth.... And when you figure out what the truth is, you’ll know how to answer that verdict form. You remember the most important trial in history, which we all read about as kids, in the Bible had that very question from the judge. What is truth?
J.A. 6038 (16:1 — 16).
After discharging the jury, the court again expressed displeasure with Cisco’s counsel and informed Commil that should
1. Grant of a New TRIAL
We review issues not unique to patent law, such as the grant of a new trial based on the prejudicial remarks of counsel, under regional circuit law. Riverwood Int’l Corp.,
As discussed supra, the district court granted a new trial based on what it viewed as the prejudicial effect of inflammatory statements made by Cisco’s counsel during trial. Cisco claims that the statements do not warrant a new trial. Cisco asks us to review the cold record— substituting our judgment for the district court’s — and find that there was no manifest injustice in this case. We decline.
In reviewing the district court’s ruling, it is clear that the court did not abuse its discretion. There is ample evidence from which the district court could conclude that the jury was biased by Cisco’s actions. Throughout trial, Cisco attempted to instill in the jury, through irrelevant references to ethnicity and religion, an “us versus them” mentality. Cisco persisted in its course of conduct even after the court warned counsel and issued a curative instruction. And, in a case involving Jewish inventors and plaintiffs, Cisco’s counsel began his closing argument with a reference to the trial of Jesus Christ.
Even if we were inclined to agree with Cisco that there is no manifest injustice in this case — and we are not — we refuse to substitute our judgment for that of a dis
2. PARTIAL New Trial
The Federal Rules, of Civil Procedure allow the courts to grant partial new trials so long as the issues are “distinct and separable.” Fed.R.Civ.P. 59. A court’s authority to grant a partial new trial is likewise constrained by the Seventh Amendment. Gasoline Prod. Co. v. Champlin Refining Co.,
Cisco contends that the district court violated the Seventh Amendment by granting a new trial on the issues of induced infringement and damages, but not direct infringement and validity. Specifically, Cisco contends, under the circumstances of this case, indirect infringement is not distinct and separable from validity, but rather, they are inextricably intertwined. Cisco argues that where the plaintiff alleges induced infringement and the defendant has evidence of a good-faith belief of invalidity, the issues of validity and induced infringement are not distinct and separable. , We disagree.
We note at the outset that “patent infringement and invalidity are separate and distinct issues.” Pandrol USA, LP v. Airboss Ry. Prod., Inc.,
We previously rejected the “argument that, under the Seventh Amendment, a new trial on willfulness would require a new trial on infringement.” Voda v. Cordis Corp.,
We acknowledge that the current case presents a unique situation where a jury considering induced infringement, but not validity, may be asked to consider evidence of invalidity in order to decide whether Cisco possessed a good-faith belief of invalidity. Nonetheless, the fact that a second jury will consider evidence of invalidity that supports Cisco’s position on the good-faith belief issue does not compel the conclusion that the second jury will decide the ultimate issue of invalidity. Indeed, the issue of whether Cisco possessed a good-faith belief of invalidity is distinct and separate from the issue of whether the patent claims are invalid. In order to determine that Cisco had a good-faith belief of invalidity, the jury must merely decide whether Cisco possessed that belief in good-faith. The jury need not decide whether the underlying position was meritorious. Thus, although the two juries will review the same evidence of invalidity, they will not decide the same essential issues. Therefore, we cannot say that separate trials on invalidity and induced infringement would constitute a clear and indisputable infringement of the constitutional right to a fair trial. Accordingly, we find that holding separate trials on the issues of invalidity and induced infringement does not violate the Seventh Amendment.
D. Claim ConstRüction AND the Merits
Cisco challenges the district court’s construction of the term “short-range communication protocol.” The court construed this term to mean “a set of procedures required to initiate and maintain short-range communication between two or more devices.” Commil USA BBC v. Cisco Sys., Inc., 2:07-CV-341, slip op. at 1 (E.D.Tex. Nov. 6, 2009). Cisco’s argument is without merit. Cisco does not contend that a “short-range communication protocol” is not “a set of procedures required to initiate and maintain short-range communication between two or more devices.” Rather, Cisco asks this court, as it did the district court, to limit the term to only those specific short-range communication protocols listed in the patent. We decline. See Phillips v. AWH Corp.,
Cisco also appeals the district court’s findings regarding validity, infringement, and damages. Cisco argues that the claims are invalid for reasons of indefiniteness, non-enablement, and lack of written description. We find these contentions without merit. Because we remand for a new trial, we do not reach the issues of infringement and damages. Rather, we leave them to be decided by the district court in first instance.
AFFIRM-IN-PART, VACATE-IN-PART, AND REMAND.
Notes
. In dissent, Judge Newman does little more than construct a straw man and set him
. Cisco was not alone in its attempt to curry favor with the jury through the use of religious references. For instance, during the voir dire, Commil’s counsel explained that the
Concurrence Opinion
concurring in part, dissenting in part.
I agree that remand is appropriate, and I agree that in this case a partial retrial was within the district court’s discretion.
However, I respectfully dissent from the change of law set forth'in Part II.B of the court’s opinion. The court holds that if the inducer of infringement believes in good faith that the patent is invalid, there can be no liability for induced infringement, although the patent is held valid. The opinion makes clear that the court intends to adjust the law, as in statements including:
We now hold that evidence of an accused inducer’s good-faith belief of invalidity may negate the requisite intent for induced infringement ...
Maj. op. at 1368-69 (emphasis added). This change in the law of induced infringement is inappropriate.
.A good-faith belief of patent invalidity may be raised as a defense to willfulness of the infringement, but it is not a defense to the fact of infringement. Patent invalidity, if proved, eliminates an invalid patent- and thus is a total defense to infringement. However, a “good-faith belief’ in invalidity does not avoid liability for infringement when the patent is valid.
The “inducement” statute, 35 U.S.C. § 271(b), serves a different purpose. The inducement statute, is designed to allow remedy against an entity that provides an infringing product or method to direct in-fringers, but is not itself a direct infringer. The inducement statute does not import a validity criterion, or a “good faith belief’ about validity, into proof of the act of infringement. See Akamai Techs., Inc. v. Limelight Networks, Inc.,
The majority’s view that a belief in invalidity can negate infringement is contrary to the principles -of tort liability, codified in the inducement statute. Liability for induced infringement is akin to “liability ... under a theory of joint tortfeasance, wherein one who intentionally caused, or aided and abetted, the commission of a tort by another was jointly and severally liable with the primary tortfeasor.”' Hewlett-Packard Co. v. Bousch & Lomb Inc.,
A defendant’s ultimate liability for induced infringement, as for direct infringement, is subject to various defenses including patent invalidity and unenforceability. However, whether there is infringement in fact does not depend on the belief of the accused infringer that it might succeed in invalidating the patent. Such a belief, even if held in good faith, does not negate infringement of a valid and enforceable patent. This rule applies, whether the infringement is direct or indirect. My colleagues err in holding that “evidence of an accused inducer’s good-faith belief of invalidity may negate the requisite intent for induced infringement.” Maj. op. at 1368.
The Court stated in Globalr-Tech that “induced infringement under section 271(b) requires knowledge that the induced acts constitute patent infringement.”
Validity of the Commil patent was sustained by the jury, sustained by the district court, and sustained by this court. Whatever Cisco’s “belief’ as to invalidity of the patent, this belief is irrelevant to the fact and law of infringement. A belief of invalidity cannot avoid liability for infringement of a patent whose validity is sustained. The panel majority’s contrary holding is devoid of support in law and precedent.
The district court applied the correct law, and excluded the issue of validity from its retrial of the issue of infringement. My colleagues now hold that although validity was found and sustained at trial, “the district court erred in preventing Cisco from presenting evidence during the second trial of its good-faith belief in invalidity to rebut Commil’s allegations of induced infringement.” Maj. op. at 1367. The court mis-cites the Global-Tech ruling concerning the inducer’s knowledge “that the induced acts constitute patent infringement,” maj. op. at 1369, for Global-Tech relates to knowledge of infringement, not knowledge of validity.
The fact of infringement does not depend on whether the inducer’s view of patent validity is held in good faith or bad faith. Validity and infringement are distinct issues, bearing different burdens, different presumptions, and different evidence. Although the court now acknowledges that “patent infringement and invalidity are separate and distinct issues,”
I respectfully dissent from the court’s incorrect statement of the law of induced infringement, and from the holding that a showing of a good faith belief in patent invalidity can avoid all liability for induced infringement of a valid patent.
. The Prima Tek and Richdel cases cited in the court's opinion do not state otherwise. See Prima Tek II, L.L.C. v. Polypap, S.A.R.L.,
Concurrence Opinion
O’MALLEY, Circuit Judge,
concurring in part and dissenting in part.
I agree in large measure with the majority’s thoughtful opinion in this case. First, I agree that the induced infringement judgment and award must be vacated. Like Judge Prost, I believe this is so both because the trial court instructed the jury to apply an incorrect legal standard during its deliberations and because the court erred in excluding evidence regarding Cisco’s alleged good faith belief in the invalidity of the asserted claims of the '395 patent. On the latter point, I agree that an accused inducer’s good faith belief of invalidity of a patent claim is relevant to its intent to induce infringement of that claim and is, thus, admissible for that purpose.
I also agree that Cisco’s objections to the trial court’s construction of the claim term “short range communication protocol” are not well taken. Contrary to Cisco’s contentions, the '395. patent’s written description does not limit the short-range communication protocol to Bluetooth and related protocols. Instead, the patent consistently refers to such protocols as exemplary. See, e.g., 395 patent at col. 18, 11. 23-24 (“Bluetooth wireless technology is an example df such a short-range communication protocol.”); col. 8, 11. 41-46. We have expressly stated that we do not limit the scope of the claims to the preferred embodiment described in the written description. See Phillips v. AWH Corp.,
Finally, I agree that the trial judge acted within his .discretion in granting a new trial following the first trial involving these parties and these patent claims. Cisco does not deny that its local counsel’s conduct was reprehensible, nor does it debate whethér some curative action was appropriate. Cisco simply asks that we substitute our judgment for that of the trial court with respect to whether that curative action should 'have been a new trial. I agree with the majority that it is appropriate to defer to the trial court’s first-hand assessment of whether counsel’s conduct was sufficiently improper as to call into question the integrity of the jury’s verdict. Accordingly, while it may be true that a different jurist might have refused to set aside the jury’s verdict in these circumstances, the decision to do so here should not be reversed.
Having 'set out those places where I agree with the majority’s resolution of this
I address these disagreements in turn.
I
Cisco argues that the trial court erred in denying its request for judgment as a matter of law on Commil’s induced infringement claim because Commil failed to prove — and allegedly cannot prove — that any third-party practices all of the steps of the method claimed in claim 1 of the '395 patent. Specifically, Cisco asserts that its customers do not perform (1) the step of “dividing” the communications protocol into two smaller protocols or, (2) the step of “running an instance” of the low-level protocol at the base station and “running an instance” of the high-level protocol at the switch. Cisco asserts that only it— and not its customers — -practices the “dividing” step because the WiFi protocol is divided into high- and low-level protocols at the factory when the products are created. Because of this, Cisco asserts that its customers cannot perform this step and, thus, do not directly infringe claim 1. With respect to the “running an instance step,” Cisco asserts that, in its WiFi system, the access points run only a single copy of the protocol that communicates with all of the connected devices, and do not run separate copies of the low-level protocols with respect to each mobile unit or device to which the access point is connected. If one or both of these steps of the claimed method are not, in fact, practiced by its customers, Cisco is correct that Commil’s claims of induced infringement — predicated as they are on claims of single party direct infringement — must fail.
On appeal, Cisco asks that we reverse the trial court’s denial of its motion for judgment as a matter of law on these grounds and enter judgment in its favor. It contends that we need not reach the propriety of the trial court’s inducement instructions or evidentiary rulings, or the need for a new trial based on errors therein, because Commil failed to prove the direct infringement predicate for its induced infringement claim. Cisco contends that these questions are dispositive of the induced infringement claims and that the need for a new trial could be obviated by their resolution.
Whatever the merits of Cisco’s argument regarding the direct infringement as
I do not purport to prejudge Cisco’s arguments; Cisco may be wrong on both points.
II
I turn next to the majority’s conclusion that the partial new trial order entered by the district corut in this case — one which we now effectively reinstate — did not violate the Seventh Amendment. I do not agree. Accepting the proposition, ás I have, that the district court acted within its discretion to find a new trial warranted in this case, . I believe that nothing other than a full retrial on all issues can be justified under the law.
While partial retrials are permissible in appropriate circumstances, the Supreme Court has set forth a strict standard for determining when such circumstances exist. In Gasoline Prods. Co. v. Champlin Refining Co.,
The requirement that issues in multiple trials be separable and distinct protects parties’ rights under the Seventh Amendment by guarding against circumstances which threaten those rights. See, e.g., Pryer v. C.O. 3 Slavic,
Partial retrials must also be avoided where it is possible that the very error that is deemed to warrant a new trial may have impacted the jury’s determination of other issues. Pryer,
As the majority explained, the trial court ordered a retrial based on statements by Cisco’s local counsel which the trial court believed were so insidious as to call into question the integrity of the jury’s verdict. See Commil USA, LLC v. Cisco Sys., Inc., No. 2:07-ev-341 slip. op. at 3-4 (E.D. Tex. Dec. 29, 2010). If the trial court believed the verdict truly was compromised, how could he — and how can we — assume the misconduct infected only a portion of their deliberations? Indeed, it could be that the jury was so incensed by its counsel’s conduct that they held it against Cisco by refusing to invalidate Commil’s patent^ despite a contrary view of the evidence.
Once the partial retrial began, moreover, the trial court’s evidentiary rulings themselves reflect the awkward posture in which he had placed the case. Most pointedly, as the majority discusses, the trial court excluded — incorrectly—evidence of Cisco’s alleged good faith belief in the invalidity of the claims of the '395 patent. What the majority fails to mention, however, is that Commil itself expressly argued that it would unduly confuse the jury to admit such evidence without also submitting the validity determination to it to decide. See Commil USA, LLC v. Cisco Sys., Inc., No. 2:07-cv-341, Doc. No. 398 at 4-5 (April 1, 2011). And, it was in response to this argument that the evidence was excluded. Where the court closest to these matters saw the potential for confusion because of the interwoven nature of the invalidity claims and Cisco’s good faith defense to induced infringement, how can we ignore that potential when we now order the excluded evidence to be admitted? I do not believe we can. I do not believe we can differentiate the circumstances here from the overlapping nature of the issues in Gasoline Products and the host of cases cited above finding a partial retrial improper based on the principles described therein.
The practical implications of the judg-ihent we render today highlight the Seventh Amendment problems we create thereby. Judge Prost and I agree not only that it was error to exclude proffered evidence of Cisco’s good faith belief in the invalidity of the claims of the '395 patent, but that the error was not harmless. In other words, we find that Cisco was . denied the right to a fair trial on Commil’s induced infringement claim because it was denied the opportunity to pursue a valid defense. In the same breath, however, Judges Prost and Newman conclude it is appropriate to retry the case in a posture that would dilute that defense.
When this case returns to Texas for a third trial, the trial court will need to craft instructions that tell the jury that, while Cisco claims it had a good faith belief in the invalidity .of the claims of the '395 patent, Cisco was wrong. The jury will need to be told that it is not permitted to conclude it agrees with Cisco’s belief. The jury will, thus, begin its deliberations already suspect about Cisco’s beliefs and the good faith nature of the same. It is precisely these circumstances against which the Supreme Court insists we guard. Importantly, given the significance of the
Finally, I do not believe we can discount the possibility that the first verdict may have represented a series of compromises by the jury. How can we know that the jury did not agree not to invalidate the claims of the '395 patent only because it found no induced infringement and understood that its direct infringement finding carried with it a smaller damages award? We cannot.
I do not contend that issues in patent cases can never be tried to separate juries, particularly after an appeal reveals that only one' issue was adjudicated erroneously. Whether and when a new trial on all issues is required must be determined “only after considering the totality of the circumstances and by answering: ‘How may the ends of justice be served?’ ” Witco Chemical Corp.,
While Cisco’s counsel’s conduct was reprehensible and warranted curative action, action which compromises Cisco’s Seventh Amendment right to a jury goes too far. I believe the trial court abused its discretion by only ordering a partial retrial of the claims asserted in this case and that we perpetuate that error by ordering yet another partial retrial.
. Where, as here, counsel for both parties ‘ made improper comments during the trial, the trial court’s curative instructions were— as the majority describes it — quite "potent,” and Commil did not ask for a new trial until invited to do so by the trial court, it also would have been well within the bounds of the trial court’s discretion to not order a retrial. On this record, either conclusion would be defensible.
. Cisco correctly points out that Commil never asserted a divided infringement, theory, that the parties jointly asked the court to omit any divided infringement discussion from its instructions to the jury, and that the jury was instructed, without objection, that it could find induced infringement by Cisco only if it first found that "a single party performs each and every step of the claimed method.”
. While I, of course, have formulated positions on these questions, because the majority insists that the next panel of this court to visit this case be relegated to resolving them, I will not say anything which might impact its independent ability to do so.
. Because it appears that Commil has abandoned its direct infringement claims against Cisco, the other issues I believe need to be tried in conjunction with Commil’s induced infringement claim include only those relating tb the alleged invalidity of the claims of the '395 patent — indefiniteness, lack of enablement, and lack of adequate written description.
. The cases upon which the majority relies do not really support its contrary conclusion. Those cases either fail to address the constitutional issue at all or do so in fundamentally different circumstances. I am not persuaded they either control or even counsel in favor of the conclusion the majority reaches.