US Supreme Court To Review Whether A Reasonable Belief Of Patent Invalidity Is A Defense To Induced Infringement

On December 5, 2014, the US Supreme Court granted a writ of certiorari to review the Federal Circuit's holding in Commil USA LLC v. Cisco Systems, Inc., 720 F.3d 1361, 1367 (Fed. Cir. 2013) that a defendant's reasonable belief that a patent is invalid is a defense to induced infringement under 35 U.S.C. § 271(b). Commil, 2014 WL 318394 (U.S.). This will be an important decision further defining the types of evidence permissible for defending claims of induced infringement, which are asserted often in patent cases, and can have wide reaching consequences.

Section 271(a) of the Patent Act provides that "whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States ... infringes the patent." 35 U.S.C. § 271(a). Under Section 271(a), a "direct infringer's knowledge or intent is irrelevant" to liability. Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 2065 n.2 (2011). Thus, a good faith belief that one is not infringing or that a patent is invalid is not a defense to a claim of direct infringement. 35 U.S.C. 271(b), on the other hand, provides liability for inducing patent infringement. Under Section 271(b), "[w]hoever actively induces infringement of a patent shall be liable as an infringer." The Supreme Court has held that Section 271(b) requires "at least some intent," including knowledge of, or willful blindness concerning, the patentee's exclusive rights. Global-Tech, 131 S. Ct. at 2068.

In Commil USA LLC v. Cisco Systems, Inc., 720 F.3d 1361, 1367 (2013), the Federal Circuit held for the first time that "a good-faith belief of invalidity may negate the requisite intent for induced infringement." Therefore, under the Federal Circuit's ruling in Commil, evidence of a good-faith belief of invalidity should be considered by the fact-finder in determining if a party has the required intent for induced infringement. Id. at 1368-69. Presumably, this would allow a defendant to introduce evidence such as testimony from employees of the defendant regarding a good-faith belief of invalidity of the patent, opinions of counsel regarding invalidity and the institution of reexamination or inter partes review proceedings by the United States Patent Office.

The Federal Circuit's majority opinion, which Judge Prost and Judge O'Malley joined, observes that, under Federal Circuit precedent, "a good-faith belief of non-infringement is relevant evidence that tends to show that an accused inducer...