Supreme Court Rules Belief in Invalidity is Not a Defense to Induced Infringement. In Commil USA, LLC v. Cisco Systems, Inc., the U.S. Supreme Court held that a defendant may not assert a good-faith belief in a patent’s invalidity as a defense against liability for inducing infringement. Inducement requires not just knowledge of the patent-in-suit, but also knowledge that the induced acts are infringing. Because infringement and validity are separate issues under U.S. patent law, a belief regarding validity cannot negate 35 U.S.C. §271(b)’s scienter requirement of “actively induce[d] infringement,” i.e., the intent to “bring about the desired result” of infringement. Invalidity does not render acts non-infringing but eliminates any liability altogether. Consequently, “when infringement is the issue, validity of the patent is not the question to be confronted.” Permitting a defense in a good-faith-but-incorrect-belief would severely undermine the presumption of validity each issued patent holds. Accordingly, the Court concluded that the orderly administration of the patent system requires separate consideration of these issues. The Court noted that the decision in no way disrupts the availability of other avenues to prove invalidity, including filing a declaratory judgment in federal court, seeking inter partes review at the Patent Trial and Appeal Board, seeking ex parte reexamination by the Patent and Trademark Office, and raising the affirmative defense of invalidity to an infringement action. It is also important to note that a good-faith belief in non-infringement continues to be founded on a reasonable interpretation of the asserted claims and a belief that the accused infringing acts are not covered by the claims under a reasonable interpretation.
source: Maier & Maier, PLLC
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