Commil USA, LLC v. Cisco Sys. - 575 U.S. 632, 135 S. Ct. 1920 (2015)

Rule:

Invalidity is an affirmative defense that can preclude enforcement of a patent against otherwise infringing conduct. An accused infringer can, of course, attempt to prove that the patent in suit is invalid; if the patent is indeed invalid, and shown to be so under proper procedures, there is no liability. That is because invalidity is not a defense to infringement, it is a defense to liability. And because of that fact, a belief as to invalidity cannot negate the scienter required for induced infringement.

Facts:

Petitioner Commil USA, LLC, holder of a patent for a method of implementing short-range wireless networks, filed suit, claiming that respondent Cisco Systems, Inc., a maker and seller of wireless networking equipment, had directly infringed Commil's patent in its networking equipment and had induced others to infringe the patent by selling the infringing equipment for them to use. After two trials, Cisco was found liable for both direct and induced infringement. With regard to inducement, Cisco had raised the defense that it had a good-faith belief that Commil's patent was invalid, but the District Court found Cisco's supporting evidence inadmissible. The Federal Circuit affirmed the District Court's judgment in part, vacated in part, and remanded, holding that the trial court erred in excluding Cisco's evidence of its good-faith belief that Commil's patent was invalid.

Issue:

Was the defendant’s belief regarding patent validity a defense to an induced infringement claim?

Answer:

No.

Conclusion:

The Court held that a defendant's belief regarding patent validity was not a defense to an induced infringement claim. The scienter element for induced infringement concerned infringement; that was a different issue than validity. According 35 U.S.C.S. § 271(b) requires that the defendant "actively induced infringement." That language required intent to bring about the desired result, which was infringement. And because infringement and validity were separate issues under the Patent Act, belief regarding validity cannot negate the scienter required under § 271(b).