Commil v. Cisco: Opening Briefs on Escaping Inducement Liability

by Dennis Crouch

The patent statute identifiers “infringers” as those who make or use a patented invention without permission of the patentee. See 35 U.S.C. 271(a) (make, use, sell, offer-to-sell, or import).  The statute goes-on to also create joint-liability for inducting infringement.  35 U.S.C. 271(b) (“Whoever actively induces infringement of a patent shall be liable as an infringer.”).  

In Commil v. Cisco, the Supreme Court is focused on inducement and the question of whether “a defendant’s belief that a patent is invalid is a defense to induced infringement” even when the patent is ultimately found valid and the belief proved unfounded.   The Federal Circuit held such a belief to be sufficient – if in good faith – to excuse allegations of inducement.  Commil challenges that new rule of law.  In its opinion, the Federal Circuit wrote that “[i]t is axiomatic that one cannot infringe an invalid patent” and thus one cannot induce infringement of a patent [wrongly] believed to be invalid.

The first round of merits briefs have been with the Supreme Court. In its brief, Commil does a good job of characterizing the case:

This case presents the question of whether a defendant may know about a patent, know that the patent is potentially relevant to its commercial activities, intentionally cause its customers to act in a manner that directly infringes the patent, and then avoid all liability because it subjectively—but incorrectly—believed that the patent was invalid. Cases in which the defendant’s belief of invalidity was correct, of course, will never implicate this question, as in those cases the patent will be invalidated and a finding of invalidity moots the infringement question.

[Commil Brief].

A core issue in the case is what the court meant in last term’s Global Tech decision when it held: “induced infringement under § 271(b) requires knowledge that the induced acts constitute patent infringement.”  Here, Commil seems to have the best historical argument based also upon Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476 (1964) (“Aro II”).

In its brief, Commil also does not let go of the sideshow that throughout the trial “Cisco’s counsel used religious references and played on stereotypes about Commil’s owner and inventors, who are Jewish and reside in Israel.”  [See Patently-O]

A number of entities have filed briefs in support of Commil. Writing for the IPO, Paul Berghoff explains:

This new defense is unsupported by the text of Section 271(b), which nowhere mentions validity. Indeed, the patent statute lists noninfringement and invalidity as separate and distinct defenses in Section 282(b). Infringement and validity are independent questions and, although invalidity may preclude a defendant’s liability in a patent suit, it does not preclude a finding of infringement.

In practice, the Federal Circuit’s decision in Commil renders inducement wholly ineffectual as a patent enforcement tool.

[IPO Brief in Support of Commil].

AIPLA largely agrees with the IPO – arguing that the new defense will “significantly undermine the ability of patent owners to enforce their rights against indirect infringers, which is sometimes their only realistic mechanism for enforcement against infringing competitors.” [AIPLA Brief]

Filing its own amicus brief, the U.S. Government (SG) also agrees with Commil – and takes a position that would re-invigorate inducement as a cause of action. Namely, the U.S. Gov’t argues that inducement only requires receipt of the patentee’s viewpoint that the conduct is infringing. See Aro II.  The Government’s point here is that the Federal Circuit is way off-base because its premise – that a non-infringement-belief avoids infringement – is wrong.

[U.S. Gov’t Brief].

Several industry briefs explain the negative impact of the decision on their industry.

  • Gilead Sciences: Treatment method patents are all-but lost.
  • Abbvie: The pharmaceutical industry depends on patents that may only realistically be enforced against indirect infringers.
  • PhRMA: These new uncertainties may chill research.

One of the more interesting briefs was filed by the Medical University of South Carolina (MUSC).

[T]he Federal Circuit’s new rule directly conflicts with the presumption of validity awarded to patents under 35 U.S.C. § 282 and with this Court’s holding in Microsoft v. i4i (2011) that § 282 requires an invalidity defense to be proven with clear and convincing evidence. Furthermore, the Federal Circuit’s new rule will require courts to develop an expansive new body of case law for induced infringement, contrary to this Court’s guidance in Limelight v. Akamai (2014).

[MUSC Foundation amicus].

[Further reading]

 

 

 

106 thoughts on “Commil v. Cisco: Opening Briefs on Escaping Inducement Liability

      1. 11.1.1

        Tks 6 but I’m not convinced. When that happens I get an in moderation flag, and that I ‘m not getting.

      1. 11.2.1

        (In only half-jest)…

        It’s only obvious software, how can you be having technical difficulties?

  1. 10

    Moving away from the invalidity/infringement dichotomy, if the accused inducer had a good faith belief that the patent was not *infringed*, would that be a defense to inducement? Or would that merely shield him from a willfulness finding per Seagate?

    1. 10.1

      Meanwhile,

      Assume the following: Your client comes to you with a product marked with a patent and asks you if he supplies the components of the product to others with instructions on how to assemble them does he infringe. You give him your opinion that the patent does not cover the marked product. Would you then say to that client that even if you are wrong, the client does not infringe by inducement even though his customer is found to directly infringe?

      Next the customer sues your client for breach of contract — because, on your advice, your client gave the customer a warrant against infringement. Is your opinion a proper defense to such a breach?

  2. 9

    This one shouldn’t even be close. The Federal Circuit has truly mangled the law on this issue. If direct infringement is a strict liability defense, what possible rationale could there be for allowing someone, with knowledge of the patent and the patent owner’s belief they are infringing the patent, that is actively inducing another to infringe to escape liability based on a wrong belief that the patent is invalid. How can one have an objectively reasonable belief that a patent is invalid that is objectively determined to be valid?

    1. 9.1

      PB: How can one have an objectively reasonable belief that a patent is invalid that is objectively determined to be valid?

      I’m not sure what the term “objectively” adds to the concept of “reasonable” in this context.

      Patent law and many other aspects of commercial law have worked successfully with the concept of a “good faith belief”, whereby an individual’s honesty and reasonableness are evaluated by people allegedly trained to do so.

      That said, if you are troubled by the question you presented then try to wrap your head around the recent GoreTex case where a dissenting Federal judge (Newman) apparently held beliefs that were deemed so “reckless” by the majority that they merited punishing a similarly inclined defendant with sanctions in the hundreds of millions of dollars.

      1. 9.1.1

        >I’m not sure what the term “objectively” adds to the concept >of “reasonable” in this context.

        It adds a lot. It gives far more weight to the jury decision because we don’t have to consider the D’s subjective beliefs. Times like this that I question your contention that you are an attorney.

        1. 9.1.1.1

          NWPA: It adds a lot. It gives far more weight to the jury decision because we don’t have to consider the D’s subjective beliefs.

          I don’t understand why you are bringing “the jury decision” into this.

          We’re talking about the difference between “objectively reasonable” and “reasonable” in the context of patent validity. My point is that in the patent invalidity context I’m not sure where the “subjectivity” comes into the equation. There’s no subjective component to the validity analysis. For example, if the patentee murders my wife, that doesn’t affect the validity of the patent. It might affect my belief about the patent’s validity but there’s nothing “reasonable” about that belief.

    2. 9.2

      “This one shouldn’t even be close. The Federal Circuit has truly mangled the law on this issue.”

      Agreed. I had held out hope that the CAFC would improve, but this is not encouraging.

  3. 8

    “If you have a point to make, try typing it out in declarative sentences.”

    Not even messing with him, I do really think those really would help anon make his points.

  4. 7

    Not only is Commil correct on the history, but common sense applies – here whole industries (correctly) argue that they could not enforce their patents in a rational way using Cisco’s theory. Congress did not intend to issue patents that could not be rationally enforced. The inducer can get the patent invalidated anyway, so adopting Commil’s viewpoint has no substantive harm to an inducer, just an extra step.

    The SC isn’t s tupid, if you tell them that the options are suits against every doctor proscribing a drug or one suit against the drug manufacturer, the manufacturer is in the best condition to fight the patent and judicial economy applies.

    1. 7.1

      If it’s a new drug that is being manufactured then the drug manufacturer is a direct infringer.

      But consider what happens if it’s an old drug that’s being manufactured and the patent protects the method whereby “new” “people in need” ingest the old, public domain drug to address their “new” “need.” Let’s say the manufacturer is aware of the method patent but has many good reasons to believe that the method is invalid. In that instance, why should the manufacturer be subject to a lawsuit for advising potential patients of the beneficial use of its public domain product (and/or its beliefs about the validity of the method patent)? Is the public interest served in any way by such a rule?

      Of course, all this talk about “drug manufacturers” is kinda silly because this is the Age of Information. The era where people can make money (and by that I mean big, big, money — the only kind that matters!) by manufacturing stuff is over. The real issue is the inducement of functionally claimed computer-assisted methods of processing and communicating information that, in nearly every instance, should never have been granted and don’t belong in the patent system in the first place.

      1. 7.1.1

        If you want to see another great example of how badly the system has gone off the rails, try keeping your lunch down while reading the all-function-all-the-time claims at issue in Pabst Non-Practicing Entity vs. People Who Actually Make Digital Cameras which the CAFC published today. Then read the panel’s claim construction analysis. The best part is probably the bit about the “limitation” reciting devices that are “customary in a host device” (nope, nothing at all indefinite about that!) but there’s all kinds of nuttiness throughout. How about that “interface device” that includes sub-“interface devices” for “interfacing” with the “interfacer”?

        It would be funny if it weren’t such an incredible waste of time and money. But some judges decided long ago that we really, really, really need this kind of stuff — along with all those lawyers whose knowledge of science and technology could fit in a thimble with room to spare — in the US patent system. Yay!

        1. 7.1.1.1

          It is kind of crazy.

          All of these really smart people arguing about the meaning of a “second connecting device…”

          Seriously, try explaining this issue to someone not invested in the patent system.

      2. 7.1.2

        The era where people can make money (and by that I mean big, big, money — the only kind that matters!) by manufacturing stuff is over.

        Someone should tell Cisco, Apple, or Samsung — or Huawei for that matter.

        Inventors have been developing digital switching and interworking technologies for decades. While the 4ESS (1976) did not have an ALU (as I remember), it was by all other standards a programmable digital computer.

        link to corp.att.com

        Why should such technology suddenly be patent ineligible?

        1. 7.1.2.1

          JM: Inventors have been developing digital switching and interworking technologies for decades.

          Decades? Wow. Given the long long history of the patent system where logic and information could have been protected with patents but wasn’t, it’s a very recent development … but still I’m super dooper impressed by those “decades” of patenting. Changes everything!

          Or not.

          Someone should tell Cisco, Apple, or Samsung — or Huawei for that matter.

          Someone should tell Big G Quinn:

          Long ago the manufacturing jobs started leaving and they are gone and not coming back. To the extent that the US has anything other than a service economy it is thanks to intellectual property and intangible assets, and everyone who seriously considers the matter knows that the chief intangible asset for businesses is software.

          See? In the future everyone will be working at programming computers, patenting the functionality of those computers, and suing people who program computers. It’s going to be awesome! Promote the progress, baby! It’s working great so far, as long as you’re in the loop. Let’s grab some popcorn and watch the country’s infrastructure collapse on “streaming video” which is, like, totally different from other kinds of data.

          1. 7.1.2.1.1

            Decades? Wow. Given the long long history of the patent system where logic and information could have been protected with patents but wasn’t, it’s a very recent development … but still I’m super dooper impressed by those “decades” of patenting. Changes everything!

            Digital computers have only been around as components in machines and manufactures since the middle 1950s. Digital computers were so big initially that it was hard to find machines where they usable as components. The 4ESS on which I worked filled a three story building.

            The patenting of program-executing devices and their programs go back to 1801 when Napoleon granted a patent for the Jacquard Loom. That patent in fact precedes the modern patent form, which is first found in Robert Fulton’s steamboat patent of 1809.

            Thus program-executing systems and their programs have been claimed as patent-eligible since the beginning of the modern patent system.

            1. 7.1.2.1.1.2

              Joachim,

              Did Jacquard Loom’s invention distinguish over the prior art based on the structure of his machine and the way in interacted with the ‘punch cards’ (for lack of a better word)… or…

              Did he distinguish over the prior art by the information content of the punch cards? Just curious.

              1. 7.1.2.1.1.2.1

                go,

                Check out that Vast Middle Ground.

                Then check out the Act of 1952 which opened up the use of terms sounding in functional language (and more than just in what is now 112(f)).

                Can we (politely) have you stop the cheerleading mantra of others?

                Thank you ever so much.

              2. 7.1.2.1.1.2.2

                I read about the Jacquard loom patent back in a history of science course that I took in 1975. I simply don’t remember the details well enough to respond, but as I recall Napoleon decided the device and system was sufficiently worthy that he granted Jacquard lettres patentes.

                1. I think we all pretty much agree that the first loom capable of altering its pattern based upon the use of punch cards deserves a patent

                2. If a computer and software where exactly the same as a Jacquard loom, then and only then you might have a point.

                  They are not.

                  You do not.

            2. 7.1.2.1.1.3

              Joachime: Digital computers have only been around as components in machines and manufactures since the middle 1950s.

              I never said otherwise. In fact, I’ve made the same observation here — and repeat it so everybody remembers – on a regular basis here. Digital computing machines are indeed very old. But protecting new digital computing machines (or any other kind of computing machine or machines generally) with patents is different from protecting information and logic with patents. I know that might be very difficult for you to understand but you should certainly try.

              Frankly, I don’t think you’re capable of having an intelligent conversation about the topic if you are already going off the rails. Good luck.

              1. 7.1.2.1.1.3.1

                Frankly, I don’t think you’re capable of having an intelligent conversation about the topic if you are already going off the rails.

                Nice.

                That’s a gem of a way of inducing an actual dialogue.

                Roughly translated: “oops, I don’t like the points you are making so I am going to pre-emptively insult you and not carry this conversation forward past my usual short script.”

                Whew, it’s a good thing that we don’t have to actually answer the question as to whether anyone would confuse abstract thoughts with actual machines and manufactures…

            3. 7.1.2.1.1.4

              Thus program-executing systems and their programs have been claimed as patent-eligible since the beginning of the modern patent system.

              The patent clause predates anything you cited.

              Regardless, in my view the problem is not that software patents exist, but that they are functionally claimed in such an overbroad manner. Applicants claim not only their code, but any processor-using device which achieves the same result, which has traditionally been subject to an abstract idea rejection, and has traditionally been routinely seen as overbroad under 112, 1st.

              A properly sized software patent claim isn’t commercially valuable. A commercially valuable software patent claim generally doesn’t validly exist.

              1. 7.1.2.1.1.4.1

                I tend to agree. That’s why I’ve (and I’m sure there are others) proposed a separate system for software patents.

                Something relatively narrow but relatively easy to obtain, with a relatively short duration (5 years maybe?).

                You’ll have to pull the patent bar kicking and screaming, of course.

                1. Why bother when patents are just fine?

                  Oops – you would have to actually make your case first (and you just have not done that).

                2. “anon”: you would have to actually make your case first

                  Your team has been making the case for us at an acclerating rate for the past few years.

                  Please keep up the great work. The best part is that you can’t help yourselves. The second best part is watching the endless tears and whining from your quail-buttered mealy mouths.

                3. My team…?

                  Um, no.

                  First, you whine that I don’t dive into the brier patch and attempt to play ‘examiner’ in your typical trotting out of individual patents, opting as I do to instead talk about the principles of patent law.

                  Second, you consistently run away from dialogues with me on those same principles.

                  Now, you seek to conflate my positions as somehow mired with this “team” concept, all the while you still run away from an actual dialogue, and you even v0mit more of the same v@pid insults as you do this…

                  This is exactly the type of C R P that has been your game eight years and running.

                  It neither f00ls nor impresses anyone.

                  Anyone capable of the slightest level of critical thinking that is.

              2. 7.1.2.1.1.4.3

                I am not sure what you consider a software patent.

                As far as I can tell, Kempf ‘078 is a software patent.

                link to google.com

                The primary component of the device claimed is software.

                Personally, I consider it unfortunate that so much hardware-oriented verbiage is used in the written specification, but such is how software patents were written in the 80s.

                I am curious what RandomGuy believes Kempf should have added to the specification.

          2. 7.1.2.1.2

            Malcolm,

            Are you really taking issue with the observation of the flight of manufacturing jobs?

            Really?

            You do realize that Mr. Quinn was merely reflecting on a very well known fact, right?

            What exactly was the point that you were trying to make?

            Other than, you know, you can be a doosh and make a rather meaningless and obtuse reference?

            1. 7.1.2.1.2.1

              Are you really taking issue with the observation of the flight of manufacturing jobs?

              Are you really unable to read English?

              1. 7.1.2.1.2.1.1

                I have no problem reading English. But you strayed a bit afar by quoting Mr. Quinn, then not being clear as to just why you quoted him, reaching instead to some smarmy insults that just don’t follow.

                Maybe use some of those declarative sentence things you are “all about”…

      3. 7.1.3

        Let’s say the manufacturer is aware of the method patent but has many good reasons to believe that the method is invalid. In that instance, why should the manufacturer be subject to a lawsuit for advising potential patients of the beneficial use of its public domain product

        Because the manufacturer is capable of instituting an action to declare the claims invalid prior to the infringement, and he is the best situated member of the public to do so because he has the most to gain by prosecuting the case correctly. The manufacturer is similarly protected if he is in fact ultimately correct whether he chooses to just go ahead with the infringement or not. The only time he is punished is when he both chooses to forego the invalidating act and is ultimately wrong about the invalidity, and that’s not a public policy loss because the public policy on a not-invalid patent would have prevented him from performing the action in the first place. Any “chilling effect” is minimal, because if you know about a patent and want to engage in infringing actions you know you’re getting a law suit either way, it’s just a matter of timing.

  5. 6

    It is axiomatic that one cannot infringe an invalid patent. Every patent attorney knows that. A corollary of the axiom is that you cannot induce infringement of an invalid patent, even if you induce practice of the claims, and if you reasonably believe the patent to be invalid, you cannot induce its infringement. Otherwise the axiom is wrong.

    1. 6.1

      The parties argue that the axiom is wrong. Rather, they argue that infringement, validity, and enforceability are each separate issues. You may be adjudged as an infringer, but still not be liable if the claims are also found invalid or otherwise unenforceable.

        1. 6.1.1.1

          Does it?

          Or does it just present the notion that two different entities might be implicated and that the patent holder has simply chosen one rather than the other?

          You are aware that is permissible to do under current law, right?

          1. 6.1.1.1.1

            “Or does it just present the notion that two different entities might be implicated and that the patent holder has simply chosen one rather than the other?”

            Um no it does not “present that notion”. Two parties potentially being implicated does not matter in the least to whether or not a given party can be implicated as an inducin infringer because they induced infringement.

            “Rather, they argue that infringement, validity, and enforceability are each separate issues. You may be adjudged as an infringer, but still not be liable if the claims are also found invalid or otherwise unenforceable.”

            ^all of those things can be separate issues, and party A could still be adjudged as an infringer regardless of whether the claims are found to be invalid or otherwise unenforceable and yet still someone may still not have induced party A to infringe if that someone thought that the patent was invalid. That being less because of the axiom (though the axiom argument is important as well) and simply because you have to be in a certain state of mind to even be able to be said to “induce” as an affirmative action. Accidental inducement, for instance, in this context, and in my book simply isn’t a thing. Similarly, it is unpossible for you to be in the state of mind necessary to be “inducing” -in the historical sense mind you-, infringement of a patent if you think the patent isn’t even valid.

            Though I can understand the argument being made and it may be that it prevails. Patent infringement being expanded once again!

      1. 6.1.2

        I would agree the axiom is wrong. Invalidity is an affirmative defense that justifies infringement, rather than negate it. Thus one can intend to infringe even when reasonably believing there is a justification.

        1. 6.1.2.1

          Ahan: That makes sense, but it has never been the theoretical approach taken by US courts. US courts have always held that invalidity negates infringement, hence the axiom.
          If the Supreme Court decides it want to give patentees more advantage in this scenario, they can nix the axiom and adopt a new axiom (yours, perhaps). If the Supreme Court thinks the current balance is good, they can just go with the current axiom.
          If they adopt your axiom, willful infringement/exceptional case jurisprudence will be upturned: strong cases of invalidity will no longer protect a defendant from willful infringement unless they actually prevail.

            1. 6.1.2.1.1.1

              Sure. With a jury and a lay judge involved, strong cases can go right over their heads. How strong does it have to be before its good enough to negate inducement liability is a fair question. But it is the same question we ask regarding non-infringement opinions and willful infringement.
              Even in popular culture, strong cases do not always prevail. And in patent law, I am sure many of us have encountered ironclad cases that failed.

              1. 6.1.2.1.1.1.1

                There is always the exception that proves the rule, but it is just that – an exception.

                If what in your mind you consider happens more than a mere exception, then you probably need to recalibrate what “strong” means.

                1. That’s the whole point here: calibrating what strong means, or if it even matters. I would prefer that a position developed prior to engaging in the “inducing”conduct, that might reasonably meet an evidentiary standard for invalidation in a reexam or litigation, should be strong enough. Or whatever the standard is be negating willfulness. We deal with the issue all the time, so it’s no additional burden on the system: It just might allow some extra breathing room for accused infringers to operate in a marketplace burdened by both high and low quality patents.
                  In my experience, strong cases of invalidity that do not prevail due to blatant error are not uncommon, but my experience is limited, so this comments section is very informative.

                2. DC,

                  Fair enough for your preference (and thank you for putting it as a preference).

                  But I would prefer less room for accused infringers.

                  A stronger patent right better serves the reasons why we have a patent system in the first place.

      2. 6.1.3

        Direct infringement is strict liability, but inducement is not. Inducement requires mens rea. And the idea that a defendants subjective mistake of fact can defeat mens rea is as old as the common law. Why isn’t it that simple?

        1. 6.1.3.1

          Mens rea…

          But of what type?

          Of the type involved with trespass? That is, one does not have to have the intent of trespassing on another’s property, but merely must have the intent of traveling on the land traveled.

          So too with inducement? Particularly of inducing a strict liability offense?

      3. 6.1.4

        Right, I see that A SINGLE party argues that the axiom is wrong. But given that the axiom was extant when Cisco undertook its analysis, Cisco clearly had no intent to actively induce infringement. You can argue that the axiom is wrong, but you cannot argue that the axiom did not exist and you cannot argue that, given the axiom, one could actively induce infringement of a claim it believed to be an invalid claim. So, even if you change the axiom, you cannot change the history of what happened in this case. A party should not be liable for infringement because a rule changes during the litigation.
        This assumes that Cisco had a decent argument, which it apparently did.

    2. 6.2

      “It is axiomatic that one cannot infringe an invalid patent. Every patent attorney knows that.”

      I’m a patent attorney, and I don’t know that. That statement is confusing and unhelpful. It is not that “the axiom” is wrong, it is that you have mis-stated “the axiom”, if there even is one.

      “Reasonable belief” is not the criterion for proving patent invalidity.

      One infringes upon RIGHTS, not upon “a patent”. More precisely, one infringes upon the SUBJECT of rights, not upon the OBJECT of rights.

      In the patent law scenario, the claims of a valid patent are the object upon which the subject of the statutorily established rights is predicated. Until such time as patent claims are proved invalid, any rights predicated thereupon can be infringed upon.

      Whether or not there is recovery for such infringement is another matter, and is decided by the actions of the parties, not by the operation of law.

      A more precise statement of the “axiom” would read as follows:

      “There can be no recovery for practicing, or inducing the practice of, patent claims that form the basis of the rights that would otherwise be granted by 35 USC, if said patent claims have been proved under 35 USC to have been either invalid, unenforceable, or both, at the time at which the acts constituting said practice or inducement, occurred.”

      This could probably be more precise, it is only a napkin sketch.

      1. 6.2.1

        OK, IBP, you got me. I meant to say “Every patent attorney except IBP knows that.”
        I think it would be hard to write an opinion letter re invalidity without referring to this “axiom.”
        Note that your more precise axiom would lead to liability in the case where the asserted claims were clearly anticipated, and invalidated during litigation, because they were not proved invalid before litigation.
        One infringes rights, not patents? You just don’t like the way every one else speaks English. Or maybe you are a philosophy professor.

  6. 5

    Just to question one word of the appellants characterization of this case, re the decision below, namely: “..avoid all liability because it subjectively—but incorrectly—believed that the patent was invalid.”
    If it really was an entirely “subjective” belief which was without any rational OBJECTIVE basis, should that not make a significant difference here, including even potential sanctions?

  7. 4

    “The pharmaceutical industry depends on patents that may only realistically be enforced against indirect infringers.”

    Lol. In other words these particular inventions are worthless on their own, but hey, if we can involve more than just one person then they’re valuable!

    “Treatment method patents are all-but lost.”

    Interesting. One wonders if “treatment methods” were ever a part of the useful arts to begin with, which might be why they’re having this issue now.

    But either way, I have to say that I substantially agree with the federal circuit’s reasoning though the supremes may well go the other way.

    The thing that really gets me about all this is why we’re just now getting this question decided. In 2014-15.

    1. 4.2

      Um, 6, can you give a little more as to why you might feel that “One wonders if “treatment methods” were ever a part of the useful arts to begin with, as facially, this quote readily appears to belong to the Useful Arts.

      1. 4.2.1

        My expanded thoughts on the subject of “useful arts” as a category of things are available elsewhere and you read them at the time.

        Suffice to say for today that even if we grant for a moment that drugs, themselves, belong in the useful arts at all, methods of treating people appear to be so far from anything remotely resembling the useful arts as that definition held effect back in the day that it would be an absurdity to consider them a part of the “useful arts”. Besides that, one wonders where all the “treatment” patents were back in the 1800’s and early 1900’s. There were plenty of new treatments that were hugely useful to people discovered/invented in those days. Yet nobody seems to have been trying to patent upon them when the phrase “useful arts” still meant something as a limitation on congress’s powers.

        In either event, I’m simply highlighting yet another instance of the general phenomena that a lot of the arts that are constantly having problems with their infringement allegations, major validity issues as an entire class, etc. simply bear little to no relation to the useful arts which the patent system was designed to accommodate. Through highlighting that it should become apparent over time that we can expect more and more such issues in these sorts of peripheral arts to pop up, and moreso on occasion bad things for the law meant for the actual useful arts can happen as a result of these disputes that ought never have taken place in the first instance.

        1. 4.2.1.1

          Not to even mention that if you’d have asked a doctor developing a new treatment in the 1900’s if he was currently engaged in the “useful arts” he’d have laughed straight in your face.

          1. 4.2.1.1.1

            U.S. Patent No. 4,848 (1846) (method of using inhaled ether as anesthetic).

            link to google.com

            I admit that I took the historical tour at Mass. General when I worked there, but this story is quite famous.

            There was also a movie, but I have never seen it.

            To be fair, a researcher developing new surgical or medical treatments circa 1900 would probably state that he was engaged in the “useful arts” , but that it would be unethical to attempt to monopolize anything that he developed.

            1. 4.2.1.1.1.1

              “U.S. Patent No. 4,848 (1846) (method of using inhaled ether as anesthetic)”

              That’s funny, looks like he claimed the means. Funny that in your premier example he was limited down substantially to the useful arts for what he was granted a patent on. Though you might can argue that application by handkerchief was included in the claim, a simple, though perhaps barely included portion of the useful arts.

              “To be fair, a researcher developing new surgical or medical treatments circa 1900 would probably state that he was engaged in the “useful arts” ”

              Mayhap you’re right, if they’re using tomgadgetry. We’re talking just about the method of treatment, no bells and no whistles from the actual useful arts. In any event, would have been interesting to have seen that case go to trial re the handkerchief “embodiment”.

              1. 4.2.1.1.1.1.1

                I am not sure what you are saying.

                The patent is entitled “Improvement in Surgical Operations”.

                The patent claimed a treatment to eliminate pain during surgery in this case the general use or application of letheon (ether) during surgery.

                1. “The patent is entitled “Improvement in Surgical Operations”.”

                  I can name my patent anything I want, but then we get limited down to the useful arts in the claims. Or at least we used to. Nowadays it’s more of an “anything goes” sort of thing.

                  “The patent claimed a treatment to eliminate pain during surgery in this case the general use or application of letheon (ether) during surgery.”

                  You need to read the claim again bro. Check out the word “means”.

                2. I am still not sure what 6 is arguing.

                  Here is a clearer version of the patent.

                  link to woodlibrarymuseum.org

                  The patent does provide one example of delivery of ether via saturated cloth but describes and refers to other modes.

                  We have here a very clear example of a general claim to treatment for reducing pain during surgery by causing the patient to inhale ether.

                3. “I am still not sure what 6 is arguing.”

                  I’m not “arguing” anything, I’m pointing out facts for you that you have yet to understand.

                  But here let me lay it out for you with that nicer version:

                  “What we claim as our invention, is the hereinbefore described MEANS, by which we are enabled to effect the
                  above highly important improvement in surgical operations, viz: by combining therewith the application of ether or the vapor thereof, substantially as above specified.”

                  “”What we claim as our invention, is the hereinbefore described MEANS, ”

                  “MEANS”

                  ^note the word means, making reference to the actual means they set forth. Then he’s combined the means with application of ether or the vapor thereof. The means he set forth is his tie to the useful arts.

                  He did not just come out and be all like “we claim the application of ether or vapor to treat patients”. There’s a difference.

                4. The final sentence explains “means”.

                  “viz: by combining therewith the application of ether or
                  the vapor thereof, substantially as above specified.”

                  “Therewith” refers to “surgical operations”.

                  The specification gives two examples of the application via cloth or sponge in a flask and refers to other modes.

                  The critical word is “substantially”. The claim simply does not say “exactly” however much you may wish to believe it does.

                  The “means” of improving the “surgical operations” is combing them with the application of ether and is not the ether saturated cloth or the ether saturated sponge in a flask.

        1. 2.1.1.1

          Ned, I would love to wager a large bet on those 9-0 odds you are offering. Forget your “own views”and ask what is it in the most recent half-dozen or more Supreme Court patent law decisions that should give you such a warm feeling that the present Supreme Court members wants to help patent owners win more patent suits [especially against those who are not direct infringers], and for patent owners to have more protection from invalidity assertions?

          1. 2.1.1.1.1

            Paul, in the recent case on induced infringement, even the Supreme Court noted the 5-4 split in Aro that “knowledge of infringement” required knowledge of the patent, and implied that it would have reconsidered Aro but for the fact that no one asked it to. So it extended Aro from contributory infringement to inducement.

            But knowledge “of the patent” has nothing to do with belief in its validity. That is a willful infringement concept if anything.

            There is a difference between a law that denies enhanced damages and a law that denies damages altogether.

            1. 2.1.1.1.1.1

              “Knowledge of the patent” seems to imply that someone, having received the patent, now knows what the exclusionary rights claimed are and can tailor his actions accordingly.

              Unfortunately, as Dennis noted the other day in his write-up of the Teva decision, that is rarely the case these days. That is, claim construction has moved far from its purpose of translating claims from technical jargon into things the lay judge and juror can understand, to a place where it is needed in order to figure out whether its infringed or invalid. That is, we need claim construction for anyone to understand the scope of the claims.

              This is the true problem with this idea that “knowledge of the patent” should be enough: it presupposes the patent rights are well defined. In certain areas of patent law, this may be true. But for anyone who has practiced in the software space, it is anything but an accurate statement of patents. I’m not saying true precision is possible (language inherently makes that impossible) but to assume that knowledge of the patent means knowledge of exclusionary rights ignores the true reality of patent litigation today.

              Unfortunately, patentees are incentivized by (often Federal Circuit made) rules to insert as much vagueness as possible into their claims (see Nautilus). A rule that premises inducement liability merely on knowledge of the patent and the patentee’s subjective belief as to the scope of the claim just encourages patentees to hide the ball even more.

              I think it’s right to deny damages to a patentee which has made their claim so intractable that someone cannot in good faith figure out how to avoid it.

              1. 2.1.1.1.1.1.1

                Jane, vagueness should result in a holding that the patent is invalid. I see no good reason to shift the defense of invalidity to deny damages to a party who actively induces conduct found to infringe and who has knowledge of the patent at the time they do so, but where the patent is not held invalid as being vague.

                1. “vagueness should result in a holding that the patent is invalid”

                  You have more faith in the Federal Circuit than I do. But more importantly, why do we even have claim construction then, where there is a non-technical need to construe the term but it’s not an indefiniteness issue? Several reasons: how the claim is read often impacts other areas, specifically e.g.: infringement, indefiniteness, the scope and content of the prior art, section 101 invalidity, written description, enablement. Many of these issues turn on how the claim is construed, and reasonable people can in good faith disagree as to the proper construction (isn’t today’s Fed. Cir. case presumably an example of that?).

                  Knowledge of the patent is not the same as knowing whether it is infringed and more importantly, what it purports to claim. There is space that exists between indefiniteness and clear claiming, as recognized by the Supreme Court. Patentees should not be incentivized (to the detriment of the innovating public) to exploit that space as much as possible, then get to sue those who legitimately believed what they were doing was outside the scope of the patent grant (whether because of invalidity or infringement).

                  Put differently, why do both Commil and the SG say that inducement should turn on whether the patentee believes the inducer causes acts that the patentee believes to be within the scope of the claim, so much so that the patentee needs to send some sort of notice letter. Why, given the public notice function of patents, is this not clear from the face of the patent? Because the patentee is incentivized to not actually make the claims clear ex ante, and instead give themselves enough room to later claim they invented something when no one would have been on notice of that claim from the patent itself.

                2. “Put differently, why do both Commil and the SG say that inducement should turn on whether the patentee believes the inducer causes acts that the patentee believes to be within the scope of the claim, so much so that the patentee needs to send some sort of notice letter. Why, given the public notice function of patents, is this not clear from the face of the patent? ”

                  Good question I admit. Though like anon you might do better to phrase this as a declaration.

                  “Because the patentee is incentivized to not actually make the claims clear ex ante, and instead give themselves enough room to later claim they invented something when no one would have been on notice of that claim from the patent itself.”

                  I don’t think that is why Commil and the SG say what you asked about. The SG surely does not condone that.

                3. I don’t necessarily think that the SG would condone it, I didn’t mean to imply that.

                  My point is a broader one: I feel that claim construction has moved away from its original intention of translating technical jargon to layman’s terms, and has now become a necessary part of most patent infringement actions to figure out what, exactly, the patent actually covers and whether it is in fact invalid (for any of the myriad reasons why it might be invalid). This seems antithetical to the public notice function of patents, and hurts patentees as well as the public (patentees because they expose themselves to otherwise avoidable claims of non-infringement and/or invalidity and the public because they can’t rely on what the patentee actually stated in the patent as delineating legitimate rights).

                  I’m concerned about a system that so readily accepts patents that are/are not infringed or are/are not invalid based on claim constructions that don’t turn on technical meanings of terms but rather on ambiguities in claims (intentional or not).

                  This is a problem for the innovator who fully intends to respect patent rights, yet is unable to do so because they didn’t determine the “correct” meaning of the claims. Should we be disincentivizing those who, by hypothesis, had good-faith reasons to believe that they were practicing acts within the public domain?

                  The patentee is in the best position to ensure their rights are protected by making their claims as clear as possible, and a rule that disincentivizes those from investing time and energy into patent clearance is not a good one.

                4. “I feel that claim construction has moved away from its original intention of translating technical jargon to layman’s terms, and has now become a necessary part of most patent infringement actions to figure out what, exactly, the patent actually covers and whether it is in fact invalid (for any of the myriad reasons why it might be invalid). ”

                  I totally agree with you that claim construction moved away from its roots. But I disagree with you that it was ever to be about putting things in laymans terms (unless you have substantial evidence to back this claim). All the evidence I’ve seen to date is that claims, and especially construction thereof, was supposed to be about what the inventor meant to claim. And that is what we’ve gotten away from.

                  And frankly I only think that we should get back to that original reason of having claims so as to force congress’s hand to make claims worth a dam and have a professional be necessarily involved in the drafting thereof, who has actual power. But, the courts don’t want that, so they give us this recent claim construction dribble where they try to slog through amateur or tomcunningly drafted nonsense.

                5. “This is a problem for the innovator who fully intends to respect patent rights, yet is unable to do so because they didn’t determine the “correct” meaning of the claims.”

                  I quite agree with all that, but the answer to that problem is not some claim construction magic, it is better, professional, drafting being mandated at the outset.

                6. 6 – that is my point: by adopting a rule that incentivizes clearer claiming (e.g. through allowing “good-faith belief” defenses), we get much closer to what you’re looking for.

                7. “6 – that is my point: by adopting a rule that incentivizes clearer claiming (e.g. through allowing “good-faith belief” defenses), we get much closer to what you’re looking for.”

                  I know, and I’ll support it in the short term. But it’s just a band-aid imo. The day of the wild wild west on claiming should be a closin, esp with these grant rates that are going on.

                8. I know, and I’ll support it in the short term. But it’s just a band-aid imo. The day of the wild wild west on claiming should be a closin, esp with these grant rates that are going on.

                  That’s fair. For me, I would have less of a problem not allowing good-faith defenses if we had patents that were much better at putting the public on notice as to the scope of the claims. In that world, I could much more easily avoid infringement if I had knowledge of the patent, as knowledge of the patent would be much more correlated with knowledge of what a patentee claims exclusionary rights on.

                9. Jane, excellent colloquy with 6.

                  To me, having “knowledge of the patent” must include more than some public notice of the patent, but must be of some knowledge, at least sufficient to put one on a duty of inquiry, that the activity of the party induced is an infringement.

                  Marking or actual notice of infringement by the patentee is clearly sufficient.

                  Your concerns about the need for claim construction would be of paramount importance if knowledge of the patent were simply no more than notice of its existence.

              2. 2.1.1.1.1.1.2

                “I think it’s right to deny damages to a patentee which has made their claim so intractable that someone cannot in good faith figure out how to avoid it.”

                If the claim is that intractable then nautilus almost certainly done blowed it upz.

                1. This relates to a research project I want to get to. I’m really curious how, if at all, Nautilus has impacted invalidity. Seems like it would be hard to actually measure. The rate at which courts find indefiniteness pre and post Nautilus I guess?

                  With Alice, for example, it seems clear that district courts at least have eagerly embraced the holding. I haven’t seen much about Nautilus but am very curious.

                2. “This relates to a research project I want to get to”

                  Just start observing 112 2nd’s that come out of the courts shortly. Or the new PTAB.

                  “The rate at which courts find indefiniteness pre and post Nautilus I guess?”

                  Sounds good to me.

              3. 2.1.1.1.1.1.3

                Jane,

                You are apparently letting your emotions get in the way.

                Your comment of “patentee which has made their claim so intractable that someone cannot in good faith figure out how to avoid it. belies the fact that you appear to be talking about a granted patent – one presumed to be valid (by law) and that means meeting the clarity requirement.

                Your lack of faith (the courts) then is misplaced.

                May I suggest that you contact your Congressmen with suggestions to change the law if you desire some higher degree of clarity.

                1. “one presumed to be valid (by law) and that means meeting the clarity requirement.”

                  Except we used to have a federal circuit that demanded there be basically no “clarity” requirement.

                2. anon,

                  I sincerely hope that you are are not so willfully blind as to the actual practice of patent law. As 6 correctly points out, until recently the Federal Circuit refused to mandate any sort of clarity despite the law. The PTO has not helped matters, by mandating formalistic rules (e.g. the one-sentence rule) without consideration of the actual impact that may have on clarity in the particular case.

                  Finally, I’d like to mention that your comment regarding my “emotions” is offensive. Veiled references to my gender do nothing to advance the conversation.

                3. The comment to your emotions had absolutely ZERO to do with your gender, Jane, and everything to do with your “wanting” the law to be something other than it is, to want some additional clarity that the GRANTED patent has met.

                  You keep wanting to blame the court (oddly) for granted patents. You seem blithely unaware that perfect clarity is just not required.

                  Lastly, I’m offended that you think my comment is geared towards your gender. Don’t play the gender card here. It is unwarranted.

                4. “The comment to your emotions had absolutely ZERO to do with your gender, Jane.”

                  I have to say, anon, that my immediate thought on reading it earlier this a.m. [your comment on emotionality] was to see it as sexist ad hominem based on the apparent gender of the person you were addressing.

                5. Mellow,

                  You say your “immediate” thought…

                  Did you then actually think about the comment in context, or did you not think at all?

                  Did you let perhaps your own emotions get the best of you, seeing the red cape of “anon says,” and remembering back to moments when I have gotten the best of you?

                6. It was also my thought upon further reflection. The word immediate was used to show that it did not require any squinting or sideways looking at of the course of events as displayed here to come to that conclusion.

                  As for your “red cape” comment; you and I have argued about many things, but they are generally different things. So pulling out your red cape analogy is inapt at best.

                  Finally, while I am sure you are a legend in your own mind, gallantly winning with vim, vigor and flair every argument in which you engage, it may come as a bit of a shock to you that others don’t find you to have “Won The Internets” much or often, if at all.

                7. Since I do not post “to win the Internet” not do I aim to be a legend in my own mind, BOTH of your jabs fail.

                  On the other hand, I do aim for dialogues on law, and if you cannot counter a position that I post, well, that’s more of you losing that legal point, eh?

                  As for the red cape analogy, it is perfectly apt, as it quite appears to capture your motive/emotional state as to why you appear eager to simply disagree (you react to the poster and not to what is actually posted).

                  Better luck next time.

              4. 2.1.1.1.1.1.4

                Best comment so far. I would go even farther, to suggest that it is impossible to induce, or willfully infringe, in the common scenario where it take two or three years of litigation to determine the meaning of the claims.

                1. DC,

                  What if you were to look at the willfulness in a “trespass” manner: the will was to do the act, whether the trespasser intended to trespass on YOUR land is not material.

                  Is there not a difference of “knowing” in kind rather than in degree?

                2. Anon: The trespass to land analogy is helpful for some basis concepts, but breaks down here. In trespass to land, it does not matter if you are mistaken as to the boundaries of the land. The boundaries are set before suit, and your location relative to those boundaries is known before suit. In “trespass” to patent claims, the boundaries are not established until the Markman hearing, and your location is not established until the jury comes back.
                  So when I consider the analogy, I become more convinced that “actively induce” and “willfully infringe” are suspect constructs. It is hard to say the I intend to infringe your claim when I don’t know what your claim means and when I learn what it means I won’t know if my device falls within that meaning without a jury decision. (For example, is the recited resistor a resistor or anything that resists current flow?, and is an inductor something that resists current flow which thus constitutes a resistor? You don’t know until the litigation is over. )

                3. DC,

                  To the contrary, I do not think the trespass analogy breaks down at all.

                  An accused infringer has either chosen to do an action or has not chosen to do an action.

                  The analogy fits because whether or not the action does or does not fall within the claim is quite secondary to the intent element of the person doing the actual action – which is exactly where the mens rea calculation is at.

                  I think that your concern – while perhaps no less valid – is with a different aspect, one of notice (and akin to fenced or posted “No Trespassing” signs).

    1. 2.2

      Breyer is currently recused. So unless something changes, I’m going to say your prediction is incorrect.

  8. 1

    Several industry briefs explain the negative impact of the decision on their industry.

    Gilead Sciences: Treatment method patents are all-but lost.
    Abbvie: The pharmaceutical industry depends on patents that may only realistically be enforced against indirect infringers.
    PhRMA: These new uncertainties may chill research.

    So basically all these groups are admitting that there are huge numbers of patents out there (most, if not all of them, in fact) which can be reasonably believed to be invalid.

    And therefore it’s crucial that deep pockets remain exposed to as much liability for indirect infringement as possible. Got it.

    Commil: Cases in which the defendant’s belief of invalidity was correct, of course, will never implicate this question, as in those cases the patent will be invalidated and a finding of invalidity moots the infringement question.

    Can someone remind everyone of the statistic: in what percentage of computer-related patent cases is the asserted patent found to be invalid?

    Just so we the complete underlying picture here.

    the new defense will “significantly undermine the ability of patent owners to enforce their rights against indirect infringers, which is sometimes their only realistic mechanism for enforcement against infringing competitors.”

    There’s nothing “unrealistic” about sueing one or more direct infringers with a valid patent and winning the case and thereby creating a climate of fear and preventing others from directly infringing. It may require more work, it may not be as profitable, and it may cause the public to look unkindly upon you, but there’s nothing “unrealistic” about the practice. Indeed, some attorneys have embraced the practice.

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