Solicitor General on Induced Infringement; Federal Circuit on Domestic Infringement

A quick recap of two notable developments in the patent law arena this week:

• At the invitation of the Supreme Court, the Solicitor General has filed a brief for the Government in Commil USA v. Cisco Systems, urging the high court to hear the case. In Commil, the Federal Circuit Court of Appeals determined that an accused infringer’s good–faith belief that the patent asserted against it was invalid could negate the “knowledge” element of induced infringement. That is, an accused infringer cannot induce someone else to infringe a patent that it had a reasonable and good faith belief was invalid. In its brief, the Government argues that the Supreme Court should review the decision because the Federal Circuit’s holding conflicts with the text, structure, and purposes of the Patent Act. While certainly no guarantee, the Solicitor General’s suggestion increases the likelihood of Supreme Court review.
• Meanwhile, back at the Federal Circuit, a panel of that court shed light on what it means to sell or offer for sale a product within the United States, a precondition for the application of federal patent law in district court. In Halo Electronics v. Pulse Electronics, the appellate court concluded that pricing and contracting negotiations inside the United States are not enough to create a US sale, where the final contract was formed outside the US, and delivery and performance occurred outside the US. Similarly, an “offer to sell, in order to be infringement, must be an offer contemplating sale in the United States.” A US patent confers significant rights on its holder, just not rights that can be exercised abroad, even if the conduct abroad hurts the patent–owner  back home in the USA.