U.S. Supreme Court Agrees To Hear Case Regarding Defenses To Active Inducement Liability

On December 5, 2014, the U.S. Supreme Court granted certiorari in Commil USA v. Cisco Systems, Inc., No. 13-896. See Order. The arguments will be limited to one issue in the petition:

Whether the Federal Circuit erred in holding that a defendant’s belief that a patent is invalid is a defense to induced infringement under 35 U.S.C. § 271(b).

This appeal stems from a 2-1 opinion at the Federal Circuit. The trial court ruled that Cisco was liable for active inducing its customers to infringe Commil’s patent. A split Federal Circuit panel reversed, because Cisco had a good faith belief that the patent was invalid. The majority reasoned that an invalid patent cannot be infringed, so a belief that a patent is invalid precludes the required intent to cause infringement required under § 271(b). Commil argues in the appeal (and the dissenting Federal Circuit judge agreed) that a determination of invalidity may dispose of liability, but infringement is “an entirely separate question capable of determination without regard to its validity[.] ” Medtronic, Inc. v. Cardiac Pacemakers, Inc., 721 F.2d 1563 (Fed. Cir. 1983). Thus, the intent to infringe required under §271(b) can exists independent of the validity issue.