United States: 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 lacked the intent required to be held liable for induced infringement." Id. at 1367-68. The majority explains that, because "[i]t is axiomatic that one cannot infringe an invalid patent," there should be "no principled distinction between a good-faith belief of invalidity and a good-faith belief of non-infringement for the purpose of whether a defendant possessed the specific intent to induce infringement of a patent." Id. Judge Newman dissented on this point finding inter alia that infringement and validity are distinct issues and that a good-faith belief in invalidity cannot negate liability for infringement of a valid patent. Id. at 1373-74.

Commil petitioned for rehearing, as well as for rehearing en banc, which was denied with five of eleven judges dissenting from the decision. Judge Reyna, joined by Judges Rader, Newman, Lourie and Wallach, issued a lengthy dissent from the denial of rehearing en banc. Commil, 737 F.3d 699, 700 (Fed. Cir. 2013).

Commil filed a petition for a writ of certiorari to the Supreme Court on January 23, 2014 raising the issue of whether a good-faith belief that a patent is invalid is a defense to inducement liability under Section 271(b). Commil, 2014 WL 281332 (U.S.). In its writ, Commil essentially makes three arguments. Commil first argues that the Federal Circuit's decision is contrary to legal precedent that has treated infringement and invalidity as separate and distinct issues. 2014 WL 281332 at *11-12. Pointing to the statutory presumption of validity under 35 U.S.C. § 282, Commil argued that the language of 35 U.S.C. § 271(b) and its legislative history do not mention or consider the issue of invalidity. Id. Second, Commil argues that the Federal Circuit's decision will erode patent rights. Id. Commil reasoned that, under the Federal Circuit's decision, "[w]here a defendant has a mistaken belief of invalidity, the patentee will now be deprived of any remedy for infringement under § 271(b) even if, for example, (1) the patent is valid; (2) the defendant knew about the patent; (3) the defendant intentionally took actions that caused a third party to infringe the patent; and (4) the defendant intended to cause that infringement." Id. Third, Commil analogizes to tort law arguing that a good faith mistake of law, e.g., good faith belief that a valid patent is invalid, does not absolve a tortfeasor of liability for a tort (e.g., patent infringement).

In its opposition, Cisco reiterated the Federal Circuit's reasoning in Commil, arguing that the decision is the result of the application of the Supreme Court's decision in Global-Tech Appliances, Inc. et al. v. SEB S.A., 131 S.Ct. 2060, 2068 (2011). In Global-Tech, the Court required that a defendant have "knowledge that the induced acts constitute patent infringement" for a finding of induced infringement. Commil, 2014 WL 1309334 at *1, 4. Cisco further argued that a defendant cannot have knowledge that the induced acts constitute infringement, as required under Global-Tech, where it has a reasonable belief that the patent is invalid. Id. at 1, 9-10. With regard to the erosion of patent rights, Cisco contends that Commil's argument would apply equally to the defense of a good faith belief of noninfringement, which has been recognized as a defense to induced infringement for years. Id. at 12. Finally, Cisco argues that the issue is not yet ripe for the Supreme Court to decide. Id. at 13-14. Cisco filed its own writ of certiorari with regard to other issues, which was denied.

The federal government weighed in on Commil's petition, recommending that the Supreme Court grant certiorari to decide whether the Federal Circuit erred in holding that a defendant's reasonable belief that a patent is invalid is a defense to induced infringement under 35 U.S.C. § 271(b). In its brief, the government largely repeated Commil's arguments. However, the government spent considerable time in its brief suggesting, albeit subtly, that the Supreme Court had not decided the intent required for induced infringement in its Global-Tech decision. Despite the Supreme Court's statement that "we now hold that induced infringement under § 271(b) requires knowledge that the induced acts constitute patent infringement" in Global-Tech, 131 S.Ct. at 2068, the government states in its brief that "Global-Tech does not clearly resolve, however, whether the defendant must additionally possess actual knowledge that the induced conduct constitutes infringement." Commil, 2014 WL 5299431 at *9. The government's brief seems to suggest that the Supreme Court should reconsider the contours of the intent requirement for induced infringement, in addition to considering 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).

The impact of the Supreme Court's upcoming decision, which can be expected by the end of June 2015, will be significant in defining the scope of evidence that can be relied upon for defending against claims of induced infringement. If the decision in Commil is upheld by the Supreme Court, defendants will have an additional defense, but until the decision issues, there will be uncertainty as to whether a good-faith belief in invalidity will be a proper defense. The Dentons Patent Litigation and Inter Partes Review (IPR) team will monitor and keep you apprised as this area of law develops in the course of this and other important decisions.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
25 Oct 2018, Other, New York, United States

Once again, Dentons is proud to bring together insurance industry leaders, lawyers and regulators for a full-day examination of the most current issues.

26 Oct 2018, Other, New York, United States

Selling your company may be the most important and complicated transaction of your life. To achieve an optimal outcome, you need to get educated.

Similar Articles
Relevancy Powered by MondaqAI
Morrison & Foerster LLP
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Morrison & Foerster LLP
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions