Federal Circuit creates a new defense to inducement of patent infringement
In Commil v Cisco (Fed. Cir. June 25, 2013), the patent owner sued the alleged infringer for inducement of patent infringement. This occurs when a third party may not necessarily be infringing the patent but is encouraging another to infringe the patent. To prove inducement of infringement, the patent owner must show that the defendant had the specific intent to induce a third party to infringe a patent. In this case, the issue was whether the alleged infringer could have the specific intent to induce another to infringe a patent if the alleged infringer had a good faith belief that the patent is invalid?
Previously, the courts did not look to whether the alleged infringer believed the patent to be invalid in determining the intent of the alleged infringer. Invalidity, as far as the courts were concerned, did not affect one’s intent to induce another to infringe a patent. In Commil v. Cisco, a three (3) member panel of the Federal Circuit held that the good faith belief of invalidity is a factor that the lower court should have considered to determine whether the alleged infringer had the requisite intent to induce another to infringe a patent. The three member panel stated that “it is axiomatic that one cannot infringe an invalid patent.” With this, the three member panel concluded that a good faith belief that a patent is invalid also mitigates the requisite intent to induce another to infringe.
This reduces the number of potential infringers that may be liable for inducement of patent infringement. Simply put, defendants who would have been found liable for inducement of infringement is now no longer liable for patent infringement. The court reduces the likelihood that the patent owner can obtain a judgment based on inducement of infringement.
The patent owner in Commil petitioned the Federal Circuit to re-hear the case en banc. The patent owner wanted all twelve of the judges to hear the case and not just three members. The petition was denied by a narrow 6-5 vote which means that the holding of Commil is now case law. (En Banc Petition Denied Fed. Cir. Oct. 25, 2013).
This case could be expanded to apply to the willful infringement analysis as well. If an invalid patent cannot be infringed, then how could one form the intent to willfully infringe a patent that is invalid since it cannot be infringed? The argument seems to be fairly basic and straight forward from the axiom that an invalid patent cannot be infringed. The power of finding willful infringement is that the patent owner can ask the court to have the defendant pay for the patent owner’s attorney fees which may be significant. Based on the reasoning given in Commil, an opinion of invalidity of a patent by patent counsel should also mitigate a charge of willful infringement in addition to inducement of patent infringement.
This case is important because it creates a new non infringement defense to induced infringement. But, it also increases the value of opinion of counsel of invalidity to mitigate a charge of induced patent infringement and also willful infringement.
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