{"id":2067,"date":"2013-10-29T17:46:12","date_gmt":"2013-10-29T17:46:12","guid":{"rendered":"http:\/\/ncjolt.org\/?p=2067"},"modified":"2020-06-04T20:53:59","modified_gmt":"2020-06-04T20:53:59","slug":"good-faith-belief-in-patent-invalidity-as-a-defense-in-induced-patent-infringement-cases","status":"publish","type":"post","link":"https:\/\/journals.law.unc.edu\/ncjolt\/blogs\/good-faith-belief-in-patent-invalidity-as-a-defense-in-induced-patent-infringement-cases\/","title":{"rendered":"Good-Faith Belief in Patent Invalidity as a Defense in Induced Patent Infringement Cases?"},"content":{"rendered":"

Tuesday, October 29. 2013, by Rory Fleming
\nIt has been long established that the direct infringement of a patent does not require knowledge of that patent or intent to infringe.\u00a0 It is up to the developers of new products to check the U.S. Patent and Trademark Office\u2019s patent database<\/a> before releasing their products out into the world.\u00a0 However, the Supreme Court held in Global-Tech Appliances Inc. v. SEB S.A.<\/i><\/a> <\/i>that induced infringement \u201crequires knowledge that the induced acts constitute patent infringement.\u201d\u00a0 The knowledge requirement for induced infringement \u201ccan be satisfied either through actual knowledge or willful blindness<\/a>.\u201d<\/p>\n

This outcome may have significant deleterious effects in the patent world because it may give companies incentives to play the ostrich when it is financially beneficial.<\/p><\/blockquote>\n

However, in denying the petition for a rehearing en banc of Commil USA, LLC v. Cisco Systems, Inc.<\/i><\/a>, the U.S. Court of Appeals for the Federal Circuit may set precedent for how induced infringement cases are handled in the future.\u00a0 Commil USA, LLC, is an Israel-based company that \u201cowns a patent . . . on a method of improving the handoff between mobile base stations when the user of a mobile device moves throughout a network area.\u201d\u00a0 Commil sued Cisco Systems, Inc.<\/a>, a U.S. company which produces WiFi access points and switches, for allegedly infringing on Commil\u2019s patented improvements.\u00a0 On appeal from the U.S. District Court for the Eastern District of Texas, the Federal Circuit held in Cisco\u2019s favor that the trial court\u2019s jury instructions were \u201cerroneous<\/a>\u201d under the Supreme Court\u2019s interpretation of 35 U.S.C. \u00a7 271(b)\u2014induced infringement\u2014in Global Tech v. SEB<\/i>.\u00a0 Specifically, the instruction that Cisco was liable if it \u201cknew or should have known\u201d that it would induce direct infringement permitted the jury to find liability on a negligence standard, which is \u201cnot necessarily sufficient to support a finding of knowledge.\u201d\u00a0 Judge Pauline Newman wrote in a partial dissent that \u201c[a] good-faith belief of patent invalidity may be raised as a defense<\/a> to willfulness of the infringement, but it is not a defense to the fact of infringement.\u201d
\nCommil sought rehearing en banc<\/a> using a theory based on Judge Newman\u2019s dissent.\u00a0 The Federal Circuit\u2019s decision vacated a $74 million jury verdict from the District Court, primarily because of the Supreme Court\u2019s Global-Tech <\/i>decision.\u00a0 Global-Tech <\/i>raised the threshold beyond negligence for a knowledge finding, and Commil <\/i>wrestled with the invalidity claim as a determinant of the existence of intent.\u00a0 Ultimately, the Federal Circuit held that a \u201cgood-faith belief of invalidity\u201d is \u201crelevant evidence<\/a>\u201d that may show a lack of intent to infringe.\u00a0 The denial of the rehearing request displays the Federal Circuit\u2019s confidence in its decision, which solidifies a tougher standard to proving induced infringement.
\nThis outcome may have significant deleterious effects in the patent world because it may give companies incentives to play the ostrich when it is financially beneficial.\u00a0 Judge Newman\u2019s position that the good faith belief in invalidity \u201cdoes not negate infringement<\/a> of a valid and enforceable patent\u201d would reward inventors who go through the correct USPTO processes of establishing and challenging patents.\u00a0 In the meantime, Commil suffered a $74 million hit with no right to recourse.\u00a0 The decision on appeal added injury to insult<\/a> from the District Court proceedings, during which Cisco\u2019s counsel allegedly behaved in an ethnically and religiously insensitive way.<\/p>\n","protected":false},"excerpt":{"rendered":"

Tuesday, October 29. 2013, by Rory Fleming It has been long established that the direct infringement of a patent does not require knowledge of that patent or intent to infringe.\u00a0 It is up to the developers of new products to check the U.S. Patent and Trademark Office\u2019s patent database before releasing their products out into …<\/a><\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":[],"categories":[51],"tags":[],"_links":{"self":[{"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/posts\/2067"}],"collection":[{"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/comments?post=2067"}],"version-history":[{"count":1,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/posts\/2067\/revisions"}],"predecessor-version":[{"id":7556,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/posts\/2067\/revisions\/7556"}],"wp:attachment":[{"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/media?parent=2067"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/categories?post=2067"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/journals.law.unc.edu\/ncjolt\/wp-json\/wp\/v2\/tags?post=2067"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}