Background
Commil USA held a patent on a method for implementing short-range wireless networks — specifically, improvements to how mobile devices connect with and communicate through wireless base stations. Commil sued Cisco, a major manufacturer of networking infrastructure including wireless access points and routers, for inducing its customers to infringe the patent through their use of Cisco’s equipment.
After two jury trials (the first verdict was vacated due to a prejudicial remark by Cisco’s counsel), Cisco was found liable for both direct infringement and induced infringement, with substantial damages awarded. Cisco appealed, challenging several aspects of the trial including the jury instructions on induced infringement. Specifically, Cisco argued it should have been allowed to present evidence that it had a good-faith belief that Commil’s patent was invalid — arguing that if it genuinely believed the patent was invalid, it couldn’t have the specific intent to induce infringement of a patent it believed not to exist as a legal matter.
The Court’s Holding
Judge Newman, writing for the Federal Circuit, agreed with Cisco and held that a defendant’s good-faith belief in the invalidity of the asserted patent can negate the specific intent required for induced infringement under § 271(b). Induced infringement requires that the defendant knew of the patent and intended to encourage acts that would constitute infringement of that patent. The court reasoned that if a defendant genuinely believed in good faith that the patent was invalid, it could not have the requisite intent to cause another to infringe what it believed was not a valid patent right.
The court vacated the induced infringement verdict and the associated damages award, and ordered a new trial. This holding aligned with the prior case law allowing a good-faith belief in non-infringement to negate induced infringement intent, extending the same logic to invalidity.
Key Takeaways
- Under the Federal Circuit’s 2013 ruling, evidence of a defendant’s good-faith belief that the asserted patent is invalid is relevant and admissible as a defense to induced infringement.
- Induced infringement requires specific intent; if a defendant genuinely believed the patent was invalid, the argument goes that it lacked the intent to cause infringement of a valid patent right.
- The Supreme Court unanimously reversed in Commil USA v. Cisco Systems (2015), holding that validity and infringement are separate inquiries — a belief that a patent is invalid does not disprove intent to cause infringement of the patent as issued. Knowledge of infringement, not validity, is the relevant mental state for § 271(b).
- After the Supreme Court’s reversal, accused infringers must challenge patent validity through validity defenses (obviousness, anticipation, § 101), not by claiming a good-faith belief of invalidity negates induced infringement intent.
Why It Matters
Commil v. Cisco (2013) briefly gave defendants a potentially powerful tool: if they could show a sincere belief that the patent was invalid — perhaps based on an opinion of counsel, a published article, or a PTAB institution decision — they could defeat induced infringement claims without proving the patent was actually invalid. The Supreme Court’s 2015 reversal closed that door, maintaining the traditional separation between validity and infringement analysis.
The case also illustrates how the Federal Circuit’s induced infringement doctrine interacts with the broader patent litigation landscape. For companies that supply technology products used by others, understanding the specific intent requirements for § 271(b) is critical: actual knowledge of a valid patent and intent to cause infringing use are required, but a subjective belief in the patent’s invalidity — however sincere — does not provide a defense after Commil.