Would you ever have thought that the question of whether a party is tortiously liable for inducing another to infringe a patent depends on what is in the inducing party’s (or parties’) heart? If you did, today the Supreme Court decided in Commil v. Cisco (opinion here) that you were in error, holding that a defendant’s belief regarding patent validity is not a defense toan induced infringement claim.
Mistakes, I’ve had a few. But this wasn’t one of them. And in this 2013 brief in a patent case, we tried to address why it could not possibly be enough for a party defending against such a claim to take the position that it cannot have induced infringement because when it acted as alleged it did not subjectively believe the patent is valid.
What made this argument particularly interesting was that the defendants’ position was premised in part on the state of the law at the time, in particular with respect to the controversial, and still-evolving, matter of joint infringement under Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301, 1313 (Fed. Cir. 2012). Still, we argued, this legal question can’t come down to feelings. We wrote against this subjective concept of the intent requirement for inducement, resisting the defendants’ motion for summary judgment on the ground of non-infringement, as follows:
[Defendants] argument that the pre-Akamai law made it “impossible” to form the necessary intent to infringe—which is restated in a different form in part (D) of their moving brief, which regurgitates their invalidity defense—is preposterous. By that logic, the defendant in Akamai itself, and every case that follows it, could and would say the same thing. . . .
The issue . . . is not whether a criminal-law-type mens rea to act unlawfully must be alleged or proved to show “intent” for purposes of contributory liability. Rather, it is whether “the accused inducer . . . “knew of the asserted patents”and performed or induced the performance of the steps of the claimed methods.”
Defendants’ statements regarding “good faith intent” on this score are, therefore, irrelevant, besides typically being inappropriate issues on which to base dismissal on summary judgment. . . .
The mistaken emphasis on subjective intent in defendants’ argument has already been addressed above. In this part of their brief, however, they place great weight on Global-Tech Appliances, Inc. v. SEB S.A., __ U.S. __, 131 S. Ct. 2060, 179 L. Ed. 2d 1167 (2011) which held that “induced infringement under § 271(b) requires knowledge that the induced acts constitute patent infringement.” Id. at 2068. But such “knowledge” is not subjective in nature. Few defendants will ever acknowledge that their infringing activities are in fact unlawful, much less generate admissible evidence to that effect. Thus, willfulness is generally a question of fact. See Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305, 1319 (Fed. Cir. 2010). . . .
Defendants have filed, along with this motion based on non-infringement, a companion motion for summary judgment on the ground of patent invalidity. Their brief in support of that motion is 25 pages long, but, evidently, they had even more to say. Therefore they have placed two additional arguments going to invalidity – one concerning priority of invention and another concerning what they claim are substantial non-infringing uses – that are properly part of their non-infringement motion and shoehorned them into what they claim are non-infringement defenses.
I’m not involved in that case any more (never mind why — there’s not enough room in your cache for that much nasty) but it was certainly pleasing to read the following in today’s Supreme Court opinion (emphasis added):
The question the Court confronts today concerns whether a defendant’s belief regarding patent validity is a defense to a claim of induced infringement. It is not. The scienter element for induced infringement concerns infringement; that is a different issue than validity. Section 271(b) requires that the defendant “actively induce[d] infringement.” That language requires intent to “bring about the desired result,” which is infringement . . . And because infringement and validity are separateissues under the Act, belief regarding validity cannot negate the scienter required under §271(b). When infringement is the issue, the validity of the patent is not the question to be confronted. . .
Were this Court to interpret §271(b) as permitting a defense of belief in invalidity, it would conflate the issues of infringement and validity.
Allowing this new defense would also undermine a presumption that is a “common core of thought and truth” reflected in this Court’s precedents for a century. Radio Corp. of America v. Radio Engineering Laboratories, Inc., 293 U. S. 1, 8 (1934). Under the Patent Act, and the case law before its passage, a patent is “presumed valid.” §282(a); id., at 8. That presumption takes away any need for a plaintiff to prove his patent is valid to bring a claim. But if belief in invalidity were a defense to induced infringement, the force of that presumption would be lessened to a drastic degree, for a defendant could prevail if he proved he reasonably believed the patent was invalid.
Sounds valid to me. Objectively, of course.
I am not involved in any of these cases, but I am curious about your take on how this will play out given that one of the rules of patent construction requires the claims to be construed in a way to preserve validity. In the course of deciding whether my client does or does not infringe, I necessarily must construe the claims and, where necessary, construe them in a manner that preserves their validity.
I think the opinion accounts for that — to the extent it can. I mean, it acknowledges that problem.