United States: Supreme Court Holds Good Faith Belief Of Patent Invalidity Is Not A Defense To Induced Infringement

Commil USA, LLC v. Cisco Systems, Inc. (Supr. Ct. May 26, 2015)

Pharmaceutical patents commonly include claims directed to methods of treatment using a purportedly novel compound, formulation or treatment regimen. In Hatch-Waxman litigations, branded pharmaceutical patent holders frequently assert allegations of infringement of such method claims against generic pharmaceutical manufacturers, using theories of indirect infringement. Patent holders allege that clinicians are induced to practice the method claims when generic manufacturers sell generic pharmaceutical products with labeling including indications of use and directions for administration. In response, generic manufacturers commonly counterclaim with defenses of non-infringement and/or patent invalidity of the asserted method claims.

On May 26, 2015, the Supreme Court of the United States held that "a defendant's belief regarding patent validity is not a defense to an induced infringement claim"—it is only a defense to liability. Commil USA, LLC  v. Cisco Systems, Inc., Case No. 13-896, 575 U.S. ___ (S.Ct. May 26, 2015). The Court reached this holding in a long-running patent infringement dispute relating to "method[s] of implementing short-range wireless networks." Although this was not a Hatch-Waxman case, the Supreme Court's decision may have a significant impact in abbreviated new drug application (ANDA) litigation involving claims of induced infringement.

Following a first trial in the U.S. District Court for the Eastern District of Texas, a jury found wireless equipment provider Cisco liable for direct, but not induced, infringement. Commil sought a new trial on the issue of inducement, and during a second trial, Cisco raised a good faith belief of patent invalidity as a defense to Commil's induced infringement allegations. Cisco's evidence on this issue was excluded at trial, without express explanation by the court, and Cisco was found liable for indirect infringement.

Cisco appealed to the U.S. Court of Appeals for the Federal Circuit on bases including the preclusion of evidence, as well as Commil's jury instruction, which improperly articulated the standard of proof for induced infringement as including negligence, rather than the required showing of intent—that the alleged inducer knew of the patent in question and knew the induced acts were infringing. Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. __ (2011). The Federal Circuit panel determined that the lower court erred in both 1) instructing the jury on inducement using a negligence standard and 2) precluding Cisco from presenting evidence of its good faith belief of patent invalidity in its defense. Commil USA, LLC  v. Cisco Systems, Inc., 720 F.3d 1361 (2013). On the second point, the Federal Circuit stated that it was "axiomatic that one cannot infringe an invalid patent," and concluded, "Evidence of an accused inducer's good faith belief of invalidity may negate the requisite intent for induced infringement." Id. at 1368. Although the Federal Circuit denied the parties' request for a hearing en banc, the Supreme Court granted certiorari to address the question relating to the invalidity defense to induced infringement. The Court vacated the Federal Circuit's decision.

Writing for the majority, Justice Anthony Kennedy (joined by Ginsburg, Alito, Sotomayor and Kagan and, in part, by Thomas, with Breyer abstaining) framed this issue as one of first impression: In view of the intent requirement for proving induced infringement "whether defendant's belief regarding patent validity is a defense to a claim of induced infringement."  Simply stated, the Court concluded, "[I]t is not"—"Infringement and invalidity are separate matters under patent law." Applying similar logic to that stated in the dissenting opinion of Judge Pauline Newman of the Federal Circuit, the Court concluded, "The scienter element of 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)." The Court explained that non-infringement and invalidity have been historically viewed as alternative defenses, and that the structure of the Patent Act separates validity and infringement in Parts II and III, respectively. Furthermore, permitting an invalidity defense to the scienter requirement of induced infringement would impact the burdens and order of evidence; undercut the long-standing presumption of patent validity; and the clear-and-convincing standard required to prove patent invalidity. The Court commented that practitioners improperly conflate the alternative defenses when saying, "An invalid patent cannot be infringed . . . because invalidity is not a defense to infringement, it is a defense to liability."

The Court opined that a belief in invalidity defense to induced infringement is not necessary, because alternate paths to obtaining a ruling on invalidity (including a traditional defense of invalidity, a declaratory judgement proceeding on invalidity, and U.S. Patent and Trademark Office procedures of inter partes review and ex parte re-examination), and a belief in invalidity defense may complicate litigation. Finally, in dicta, the Court noted that some patent holders pursue frivolous patent claims. While "[n]o issue of frivolity has been raised by the parties in this case . . . district courts have the authority and responsibility to ensure frivolous cases are dissuaded" using Rule 11 sanctions and §285 attorney's fee awards.

In dissent, Justices Antonin Scalia and John Roberts disagreed with the majority's view that infringement and invalidity as entirely independent issues. They note that, "To infringe a patent is to invade the patentee's right of exclusivity. An invalid patent confers no such right." Further, "Because only valid patents can be infringed, anyone with a good faith belief in a patent's invalidity necessarily believes the patent cannot be infringed." Therefore, good faith belief of invalidity is a defense to infringement. The dissenting opinion briefly responds to the remaining arguments set forth by the majority: 1) The Patent Act's separate treatment of validity and infringement is irrelevant, as these issues are necessarily intertwined for the reasons stated above; 2) the statutory presumption of invalidity would not be undermined as the burden of proving invalidity by clear and convincing evidence remains; and 3) the practical reasons not to create an invalidity defense to induced infringement are not the concern of the Court; the Court is to interpret the Patent Act. Finally, the dissent notes that it if were the Court's province to consider the practical implications of the ruling, the majority holding "increases the in terrorem power of patent trolls," which is not preferred.

Supreme Court Holds Good Faith Belief Of Patent Invalidity Is Not A Defense To Induced Infringement

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.

In association with
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
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.