Commil USA V. Cisco Systems: 'I Thought It Was Legal' Is No Defense To Induced Infringement Under 35 U.S.C. § 271(B)

The United States Supreme Court's recent decision in Commil v. Cisco1 held that a good-faith belief of a patent's invalidity, standing alone, is insufficient to provide a defense to a claim of inducing another's infringement of a United States Patent. Viewed through the historical overlap and common reasoning underpinning the analysis of intent to induce infringement under 35 U.S.C. §271(b) and willful infringement under 35 U.S.C. §284, this new jurisprudence will spawn uncertainty and require new litigation strategies under both doctrines. Given this uncertainty, accused infringers may find advantage in going on the offense and leveraging a strong invalidity argument to drive to an early judicial determination of invalidity.

35 U.S.C. §271(b) provides that: "Whoever actively induces infringement of a patent shall be liable as an infringer." The threshold to a claim of induced infringement requires the active inducement of an act of direct infringement by another. While the plain language of the statute does not speak to "intent," the meaning of "active inducement" evolved through decades of precedent to require proof that the defendant: (1) had actual knowledge of the patent; (2) knew that "the induced acts constitute patent infringement;" and thus (3) had an intent to induce.2 Prior to Cisco, a good faith belief that a patent was invalid provided a basis on which to defeat the intent element of the inducement inquiry. The reasoning, and based in an axiom of U.S. Patent law, was simple: "one cannot infringe an invalid patent." 3 But in Cisco, the United States Supreme Court turned this axiom on its head, holding that a defendant's good-faith belief of a patent's invalidity is not a defense to a claim of induced infringement.

The Decision

Commil filed suit against Cisco in the United States District Court for the Eastern District of Texas, a hotbed of patent ligation in the United States, asserting (among other claims) that Cisco induced infringement of a patented method of implementing short-range wireless networks. In support of its defense to the alleged inducement, Cisco sought to introduce evidence of its good-faith belief that Commil's patent was invalid, and therefore argue that it could not have knowingly and intentionally induced infringement. The district court, however, excluded this evidence. On appeal, the Federal Circuit reversed, reasoning that "evidence of an accused inducer's good-faith belief of invalidity may negate the...