The Presumption Of Validity Triumphs Over A Good-Faith Belief Of Invalidity

On May 26, 2015, the Supreme Court decided Commil USA, Inc. v. Cisco Systems, Inc., 575 U.S. ____, (2015), holding that a good-faith belief that a patent is invalid is not a defense to inducing infringement liability under 35 U.S.C. § 271(b) ("[w]hoever actively induces infringement of a patent shall be liable as an infringer."). The Supreme Court reversed the Federal Circuit's decision holding that "evidence of an accused inducer's good-faith belief of invalidity may negate the requisite intent for induced infringement." Commil USA, Inc. v. Cisco Systems, Inc., 720 F.3d 1361, 1368-69 (Fed. Cir. 2013).

To prove a claim of induced patent infringement, patent owners already must establish that there is: (1) a direct infringement of the patent; (2) the party accused of inducement knowingly engaged in acts that induced the infringement by the direct infringer; (3) the party accused of inducement knew of the patent at issue; and (4) the party accused of inducement acted with intent to cause a patent infringement. See In re Bill of Lading Transmission & Processing Sys. Patent Litig., 681 F.3d 1323, 1339 (Fed. Cir. 2012); see also Global-Tech Appliances, Inc. v. SEE S.A., 131 S. Ct. 2060, 2068 (2011); DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1306 (Fed. Cir. 2006).

As the Supreme Court held in Global-Tech, and reaffirmed in Commil, liability "for induced infringement can only attach if the defendant knew of the patent and knew as well that 'the induced acts constitute patent infringement.'" 575 U.S., slip opn. at 6. Knowledge and intention of the accused infringer are thus already built into the burden of a patent holder's proof. The outcome of the Commil case was quite significant to patent owners, for the Federal Circuit's rule would have allowed an accused infringer to defeat induced infringement claims based on the accused infringer's good-faith-but-incorrect-belief of invalidity of the patent, even though the accused infringer knew of the patent and knew that the acts it was inducing constituted infringement. The Supreme Court, however, found that "[t]he scienter element for induced infringement concerns infringement; that is a different issue than validity. . . . And because infringement and validity are separate issues under the Act, belief regarding validity cannot negate the scienter required under §271(b)." 575 U.S., slip opn. at 9. The opinion can be found here.

In 2007, Commil USA, Inc. ("Commil") brought suit in the Eastern District...