Supreme Court Sides With Patent–Asserter In Commil v. Cisco

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Supreme Court Sides With Patent–Asserter In Commil v. Cisco


A divided Supreme Court held today in Commil v. Cisco that an accused infringer’s good–faith belief in the invalidity of a patent asserted against it is not a defense to an allegation of induced infringement. The opinion is a victory for the patent–assertion entity who sued Cisco, and another Supreme Court defeat for the Federal Circuit Court of Appeals, which was again reversed by the high court.

In the majority opinion, written by Justice Kennedy, the Court made two key points. First, it reaffirmed the holding of Global–Tech v. SEB that the knowledge requirement of an induced patent infringement claim requires that the accused inducer know that the conduct it is inducing is patent infringement. The Petitioner and the Government had asked the court to roll back this holding. Second, the majority held that an accused inducer could not rely on a good–faith belief in the patent’s invalidity as a defense that it did not meet this knowledge requirement. The Court concluded that invalidity and infringement were conceptually and statutorily distinct concepts, meaning that an accused infringer could know that it was inducing infringing conduct without regard to whether it believed that the infringed claims were valid. The majority acknowledged the proliferation of litigation brought by patent trolls, but reasserted that frivolous claims could be dealt with by district courts through the application of Federal Rule of Civil Procedure 11 sanctions and an award of attorneys’ fees to prevailing defendants in exceptional cases under 35 U.S.C. § 285.

In dissent, Justice Scalia, joined by Chief Justice Roberts, agreed with the majority on the scope of the holding in Global–Tech, but hotly disputed the conclusion of the Court on the main issue in the case. Declaring it “nonsense” “[t]o talk of infringing an invalid patent,” Justice Scalia concluded that a party that believes in good faith that a patent is invalid “necessarily believes the patent cannot be infringed,” and therefore cannot know that it is inducing another to infringe it. The dissent closed by disputing the majority’s policy claim, concluding “that if the desirability of the rule we adopt were a proper consideration, it is by no means clear that the Court’s holding, which increases the in terrorem power of patent trolls, is preferable.”

We share Justice Scalia’s concern that this opinion will be viewed as a boon by patent trolls who frequently accuse retailers, for example, of inducing customers who visit their retail websites to infringe business method or software patent claims

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