Commil v. Cisco: Despite Supreme Court Win, Patentee Still Loses

Commil USA, LLC v. Cisco Systems, Inc., __ F.3d __ (Fed. Cir. 2015)

On remand from the Supreme Court, the Federal Circuit has again concluded that the jury’s infringement verdict was wrong – but this time altering the grounds for its decision. “We now conclude that substantial evidence does not support the jury’s finding that Cisco’s devices, when used, perform the ‘running‘ step of the asserted claims. The district court’s judgment is therefore reversed.”

In its 2015 decision in the case, the Supreme Court had rejected the prior Chief Judge Prost non-infringement opinion. Under the Supreme Court analysis, the good-faith (but wrongly held) belief that a patent is invalid does not excuse a defendant’s actions to actively induce another party to infringe the patent.

Rather than re-focusing on the legal intricacies of inducement, this time the appellate panel shifted focus to the defendant’s alternative argument — that there was no underlying infringement.  Here, the patent is directed to a wireless communication system with at least two Base Stations that run a “low level” protocol for each connection, but according to the appellate panel, the patentee failed to prove that Cisco (or its customers) used their base stations in that manner. Instead, Cisco’s testimony was that its Base Stations operate a single protocol instance that is used for all connections.

The most interesting element of this decision is that it could have been written back in 2014 when the panel wrote its original decision and the Federal Circuit could have avoided the questionable legal grounds that were later rejected.

 

31 thoughts on “Commil v. Cisco: Despite Supreme Court Win, Patentee Still Loses

  1. 6

    The most interesting element of this decision is that it could have been written back in 2014 when the panel wrote its original decision and the Federal Circuit could have avoided the questionable legal grounds that were later rejected.

    Not only that, but wouldn’t this have also avoided the need for the new trial the Federal Circuit ordered in its first opinion? It’s one thing to dispose of an appeal on one of several available alternative grounds — e.g., if claim X is obvious, there’s no need to decide whether it’s also anticipated. It’s another thing to dispose of an appeal on one ground and then to dodge other issues that aren’t actually subsumed in the ground of decision.

  2. 5

    I wonder how the S.Ct. took this. There was a second basis for reversal lurking in the case that had nothing to do with the issue on certiorari. I would think the Court would want all bases for review exhausted first before it reviews them or one of them. Otherwise, the effort is wasted in that case (although it is still precedential for other cases).

    1. 5.1

      Because one issue was an issue broadly applicable to induced infringement cases in general, and was the basis for the decision below, while the other issue was fact dependent on this specific case. What seems unusual here was the Fed. Cir. going back to consider the alternative decisonal grounds they had not needed to consider before.

      1. 5.1.1

        It is unusual for at least the reason that the lower court here did not actually follow the directions of the Supreme Court:

        The judgment of the United States Court of Appeals for
        the Federal Circuit is vacated, and the
        case is remanded
        for further proceedings CONSISTENT with this opinion.
        ” (emphasis added) COMMIL USA, LLC v. CISCO SYSTEMS, INC., Slip Op at 14

        Note that the remand direction was fairly explicit and did not include “well, try and find a different reason that avoids having to be consistent with this opinion.

        1. 5.1.1.1

          “further proceedings CONSISTENT with this opinion” is not the same thing as “further proceedings LIMITED to this opinion or the issues decided in this opinion.”
          This Fed. Cir. decision does not relate to anything considered or decided by the Sup. Ct.

          1. 5.1.1.1.1

            No one said “Limited to

            But no matter how you attempt to define it, “consistent with” does NOT match what happened here. There could have been an “in addition to” that would have made this NOT “limited to – but that did not happen, now did it?

            And further, your own words of “does not relate to anything ” make my point for me, as the MANDATE for this case reappearing back into the lower court was clear.

            And clearly NOT followed.

      2. 5.1.2

        I understand why the Supreme Court would be interested in the one issue but not the other. My point was, though, that the case potentially could have been disposed on the narrower issue and avoided the trip to the Supreme Court. It would seem to me that the Supreme Court would first want to know that there are no alternative grounds for reaching the same result before it takes a case. (In the language of res judicata law, that it was “necessary to the judgment.”) As it was, in hindsight, the whole review by the Supreme Court was moot, since in the end, the petitioner lost anyway for a separate reason.

    1. 4.1

      Dennis or someone else needs to do an objective study of the win-loss rate in final decisions in patent suits nowadays as compared to several years ago to know whether or not such pessimism, that “the patentee almost always loses,” is factually justified or not?
      Such studies are made more difficult by the fact that more than 90% of all patent suits are settled before any decision and the amounts paid by the defendants to get out of the litigation are often not public, even though such settlement payments are partial wins for the patent owner, especially if collected from multiple defendants, or resulting in large valuable licenses.
      The majority of actual and final judicial decisions in favor of defendants seem to still be for non-infringement, as here? But, both the increased use of reexaminations, IPRs, Alice-101 suits disposals, 112 defenses, KSR, eBay, and [to a much lesser extent] claim ambiguity defenses do seem to be having some [as yet unmeasured?] effect? Also, we have Michael Smith’s blog reports on win-loss statistics in E.D.TX, the largest patent suit forum, which do seem to have increased in favor of defendants. But elsewhere we have had recently had two huge verdicts for university owned patents, for example. And many regular wins for challenged pharmaceutical company patents that did not made news.

      1. 4.1.1

        P.S. Samsung would certainly not share your view that “the patentee almost always loses.” Note the more recently reported Fed. Cir. Apple v. Samsung patent suit decisions reported on this blog and elsewhere.
        [Although one does wonder if the biggest winners were various law firms with huge [unrestricted?] billing opportunities from Apple and Samsung, especially with belated or never even attempted reexaminations or IPRs even of design patents.]

        1. 4.1.1.1

          The major Apple wins were over “design” patents. Once, sort of a joke, now the only sustainable protection. Yes, pharmaceuticals are the only wins, but this is political. Take it from one with about 50 years in the prosecution biz.

      2. 4.1.2

        This proposed analysis of court cases only begins to reveal the change. I cannot professionally recommend that a client pursue a patent unless that client simply wants a publication.

        Sometimes we practitioners negotiated a “picture claim.” Now, that’s the most that is offered, at double the maintenance fee for an easily avoided claim coverage. Branding and copyrights, that’s the new IP game.

  3. 3

    If “Commil USA, LLC” is a PAE with financial investors funding this litigation, they lost their shirts on this one.

  4. 2

    Claim 1 reads:
    In a wireless communication system comprising at least two Base Stations, at least one Switch in communication with the Base Stations, a method of communicating between mobile units and the Base Stations comprising:
    (a) dividing a short-range communication protocol into a low-level protocol for performing tasks that require accurate time synchronization and a high-level
    protocol which does not require accurate time synchronization; and
    (b) for each connection of a mobile unit with a Base Station, running an instance of the low-level protocol at the Base Station connected with the mobile unit and running an instance of the high-level protocol at the Switch.

    I don’t know what prior art Commil was up against, nor do i know what the specification said, but it seems to me like the infringement analysis (from the CAFC’s view point) was that: Cisco cannot infringe because (1) for each mobile unit there must be a instance (parameters and complete set of procedures) and (2) Cisco only uses one set of procedures with a plurality of parameter vectors (one for each mobile unit) that are used one at a time with the set of procedures.

    How? “short-range communication protocol” mean “a set of procedures required to initiate and maintain short-range communication between two or more devices.”

    Sounds like if you just add “an instance can be a unique procedure for each device or parameters substitutable into procedure for each device” there is infringement… I wonder if that is bad litigation work OR prosecution work?

    1. 2.1

      From specification:
      For each connection of a Base Station with a handset, there is a separate instance of the low-level protocol running at a Base Station connected to the handset, and a corresponding separate instance of the high-level protocol running at the Switch. These instances are created, on an as-needed basis, when a connection is initiated. Preferably, a real time multi-tasking operating system is used in order to allow handling of many instances of the protocols simultaneously in the Base Stations and in the Switch. The procedures that the Switch uses during initiation of a connection and later, during handoff, are discussed in greater detail hereinbelow.

      FIGS. 5, 6 and 7 have illustrated a call setup procedure for the handling of a single call. When either the Base Stations or the Switch need to handle more then one call, several instances of these procedures can be run in parallel. For that purpose, both Base Station software and Switch software are preferably based on a real time operating system that supports multi-tasking. For each new call, a new task will be created, and the task will perform the procedures described in FIGS. 5, 6 and 7. The task will be closed when the procedure is completed.

      If the message arrived from the Switch (step 352, “N”) the ID of the sending low-level protocol instance is located (step 353) in the “Connections Table”, and the message is sent (step 354) to an instance of a corresponding high-level protocol. If the message arrived from one of the high-level protocols (step 352, “N”), it is determined (step 360) whether a handoff has begun (is in progress). If a handoff is not in progress (step 360, “N”), the call parameters are compared with the Connections Table (step 358) and the message is sent to the Base Station on which the destination low-level protocol instance is running (step 359). If a handoff is in progress (step 360, “Y”) the call parameters are compared with the Connections Table (step 355) and the message is sent to the Base Station on which the destination low-level protocol instance is running (step 356). The message is also sent (step 357) to all the Base Stations that are candidates for handoff—e.g., neighboring Base Stations. The Base Stations receiving the message can then check if they are running the destination low-level protocol and, if not, the message is simply discarded. The procedure shown in FIG. 12 handles a single message. By using a multi-tasking operating system, it is possible to run several instances of these procedures, and thus handle more than one message simultaneously.

      Looks like they drafted themselves into a corner.

    2. 2.2

      It is always bad litigation. The litigators have the last clear chance to say, no to the client.

      Of course, they may have to give up millions in fees if they tell the client it makes no sense to try to assert the patent against this alleged infringer, but that is beside the point.

    3. 2.3

      Sounds like if you just add “an instance can be a unique procedure for each device or parameters substitutable into procedure for each device” there is infringement… I wonder if that is bad litigation work OR prosecution work?

      It’s kind of easy to draft broader claims after the fact, unconstrained by the prior art and with several additional years of hindsight.

      Perhaps the actual inventive contribution doesn’t actually cover “or parameters substitutable into procedure for each device.”

  5. 1

    Also published today: CAFC opinion affirming ineligibility of Vehicle Intelligence‘s ridiculous claims reciting the use of an “expert system” which screens “equipment operators” for “potential impairment” and take over control of the equipment as a result.

    Vehicle Intelligence [argues] that the district court erred in finding this step satisfied because the claims at issue do not preempt all equipment operator testing. It argues that the existence of prior art methods of equipment operator testing, evidenced by the eleven prior art references identified in the ’392 specification, prove that the claims at issue do not preempt the abstract idea of performing equipment operator testing because these references describe non-infringing methods for doing so. This argument is meritless. …[T]he mere existence
    of a non-preempted use of an abstract idea does not prove that a claim is drawn to patent-eligible subject matter. If we adopt Vehicle Intelligence’s argument, all a
    patentee would need do to insulate itself from a § 101 challenge would be to identify a single prior art reference in the specification and state that its invention improves upon that reference.

    Live and learn people. This is never going away.

    1. 1.1

      I love how everyone argues that DDR Holdings applies to their case. I can’t count how many times I’ve been told the claims at issue are like DDR Holdings. I hope DDR Holdings is aware of how wide-ranging their patent apparently is.

    2. 1.2

      So, Malco-man, if you were the attorney for the patent applicant, how would you have written the claim?

      Or would you have told the client that there is no way to claim it and that he/she/it should forget about patenting the whatever?

      1. 1.2.1

        That’s it. Fogettaboutit. Look to branding and copyrights. The patent system is “fixed.”

      2. 1.2.2

        You can’t write a claim on that disclosure, that’s the point. They don’t disclose how their machines “screen” someone for impairment, they don’t disclose how their machines determine if someone is impaired and they don’t talk about how they “control operation of said equipment” if the person is impaired.

        It’s just a general concept that we don’t want drunk people driving cars, so if the car determines your drunk it drives itself.

        If a client walks in and tells you he has a machine that figures out if someone is drunk and drives the car if he is, but refuses to tell you (or the public) how that is achieved, the correct thing to tell the client is “there is no way to claim it” and that he/she/it “should forget about patenting the whatever.”

        I should point out, of course, that generally cops can screen for potential drunkenness, and breathalyzers can determine if someone is drunk. I doubt a self-driving car was previously enabled at the time of filing but I’m sure it was google and not these guys that first did it if it was – in short, it was likely unenabled or obvious anyway. But we can’t tell, of course, because we don’t know how the invention worked.

        If “controlling operation” is read to include “locking out the user from control” then certainly there are brethalyzer equipped cars which anticipate the claim, but again we don’t know because we don’t know how the invention works.

        1. 1.2.2.1

          Just so I can give you a complete answer: A disclosure that had a new method of screening people for a malady is patentable. But it’s patentable irrespective of the disclosure of the car content. So if you have a new method of screening you could disclose it and claim it.

          Ditto a machine that determines if someone has a condition. A new breathalyzer is patentable if non-obvious. Again, that would be patentable absent a limitation to place it in the context this claim does.

          Similarly, while you can’t get a patent for just locking someone out of a system, if “control operation” literally means drive the car for you for some set of time in some manner, the algorithm for doing so would be eligible and likely patentable.

          But instead what seemed to happen is that this guy said “methods for screening for maladies are known, machines to test for maladies are known, and one could write code to lock out a person with a malady from operation” – that act is admitting two of the three limitations are anticipated and the third is obvious because there was a pre-existing motivation to keep impaired drivers from operating vehicles. It’s clearly obvious beyond the fact that it is an abstract idea.

          It’s a great example of how people can use functional language to confuse the office into allowing something that should never be allowed – though it could have been allowed pre-KSR in which case its not so clearly the office’s fault.

          1. 1.2.2.1.1

            ^^^ The epitome of what is “wrong” with “the system” today…
            An examiner piping up, laying blame on the applicant (when it is ONLY the Office and her examiners that have the power to grant such a patent in the first place), confusing and conflating the law and making a mockery on top of a mockery.

            Random, you ever hear of the phrase: two wrongs do not make a right?
            Ever hear of: do the job right the first time?
            Ever hear of: the ends do not justify the means? – both in “what” section of law is used, and here your “reasoning” – both of which are slipshod and lack critical thinking,

            Each of these apply here and now.

            There is NO “use functional language to confuse the Office” excuse to be had.
            STOP that falsity.

            Functional language is ALLOWED under law (see the Act of 1952).
            DEAL WITH IT.

            Your “just so complete” highlights the fact that 101 is IMPROPER to substitute for 102/103/112. These are simply not meant to be “whatever”ed in a rejection (had the job been done right in the first instance) or invalidity action.

            Where is the corrective action mindset here? Who was the examiner? Who was the SPE? How did this “get by?” Even IF “confused,” since the use of functional language is ENTIRELY appropriate, what are we – the royal we – going to do about such a hapless Office that cannot seem to do their own Fn job right, and where is the PROPER umbrage over the poor examination?

            Instead of taking the opportunity to FIX the system at the source of the problem, we have an examiner no less making bonehead comments seeking to advance the kool-aid mantra of a certain anti-patent philosophy.

            Instead of any semblance of root cause analysis and correction, we will (no doubt) hear about those “protecting poor patent claims” even as NO SUCH position is being taken.

            And FAR too many lemmings who either do not care or who have become so jaded with the ad infintium ad nauseum of this forum to even notice.

            Is that what we are “teaching” here?

            And that is the real shame here: the opposite of critical thinking when it comes to the law and the “advancement” of certain “philosophical” agendas.

            1. 1.2.2.1.1.1

              You can’t expect the office to apply Alice prior to Alice being decided, nor can you expect the office to apply KSR prior to KSR. Under today’s law it’s clear just how unallowable things are. It’s not so clear to a non-lawyer under previous law. But one side has a lawyer and the other does not, and the side with the lawyer should have recognized that he had to disclose how his machines worked.

              There is NO “use functional language to confuse the Office” excuse to be had.

              Of course there is, this claim is about an “expert system” which performs functions without explaining how the functions are performed. When that happens it frustrates a 103 search because you can only search on the functional result rather than the underlying acts, which makes it extremely less likely you’ll find something. With no Alice 101 guidance and a hampered 103 search, of course its more likely that bad claims issue.

              Where is the corrective action mindset here? Who was the examiner? Who was the SPE? How did this “get by?” Even IF “confused,” since the use of functional language is ENTIRELY appropriate, what are we – the royal we – going to do about such a hapless Office that cannot seem to do their own Fn job right, and where is the PROPER umbrage over the poor examination?

              Well it’s partially been fixed by the Alice decision, but I agree that the office in certain areas, like software, needs to re-orient to focus on 112 rejections rather than 103 rejections, because most claims are so overly broad with no supporting disclosure you can dispose of the application solely on 112 grounds. Maybe one day if I leave the office I can explain exactly what the problem is, and you’ll proceed to complain about that too.

              Instead of taking the opportunity to FIX the system at the source of the problem, we have an examiner no less making bonehead comments seeking to advance the kool-aid mantra of a certain anti-patent philosophy.

              Oh make no mistake, the source of the problem is the attorney or a non-inventor. Either the person never invented a machine that can screen for driver malady, in which case the problem comes from non-invention trying to pass itself off as invention, or the inventor did and the lawyer chose to not convey it to the public in an overzealous effort to get a ridiculously large scope.

              And that is the real shame here: the opposite of critical thinking when it comes to the law and the “advancement” of certain “philosophical” agendas.

              Oh anon, we all know you don’t know anything about what the law actually says.

              1. 1.2.2.1.1.1.1

                You are using the term “functional language” but I do not think that you understand what that term means.

                Further, I am NOT expecting anything of the sort of applying new law written by the judicial branch instead of the proper branch that is to write statutory law. Where are you getting that from?

                And please – let’s not hear your “not a lawyer” whine – you are charged to know the law insofar as it is your Fn job to apply the law.

            1. 1.2.2.1.2.1

              No, that is not what I am saying. What I am saying is that because he only provides a general framework for solving a problem it’s impossible to correctly perform a 103 analysis, I have to shortcut it in order to create a 103 rejection.

              Here is what the spec states: We want to keep impaired users from using machinery. So an impaired user should not be allowed to control machinery. Machines can determine if a user is impaired. But we don’t want to test people constantly, so only initiate a test when there is some indication they are impaired.

              That’s not an invention, that’s just a thought experiment. A child with no technical skill could reason that out. Now I can reject it under 103 because there is a real-world example that achieves the same end – police notice drivers are drunk, perform a sobriety test, and arrest the person (thereby preventing them from operating a car). Therefore it is obvious to write a computer program to perform the same algorithm the policeman does. But let us assume there was no drunk driving crime and no police analogy – it doesn’t change the fact that the only thing this applicant has conveyed is a thought experiment.

              By only conveying general steps to achieve rather than conveying HOW to achieve them, the applicant makes it impossible for the office to search a 103 correctly. How would you search the disclosure above? The only way is either 1) have the examiner become an inventor himself, and figure out what machines could perform each step, then search if those machines existed prior to filing or 2) search only the functional result itself. (2) is unacceptable, because it leads to things which are in fact old being allowed because the description of their result uses different words. (1) is unacceptable because the whole point is that the reader doesn’t have to be the inventor, that’s why we’re giving the writer an exclusionary right.

              See, absent a 101 rejection to prevent the applicant from only disclosing results rather than means to achieve those results, you would get hampered 103 analysis which would be easier to pass – it would encourage people to be vague in order to make it past 103 easier. The fact that I could figure out a (poor) 103 rejection IN THIS CASE doesn’t mean that 101 by itself doesn’t have value.

              Beyond that, and this seems extremely simple – the fact that a claim violates multiple parts of the statutes doesn’t mean you’re limited to rejecting it via one manner. The claim also violates 112 because it fails written description. There’s no heirarchy that says that the invalidation has to come from 103 instead of 112 instead of 101. If the claim/disclosure is so poorly constructed it violates multiple statutes it simply violates multiple statutes.

            2. 1.2.2.1.2.2

              Let me put it like this SVG – Because the specification doesn’t disclose anything, I don’t know what the inventor actually possessed or actually did. If he actually created or posited a new machine then the lawyer screwed up by not disclosing the machine. In that case, you still cant “fix” it by writing a different claim – you would need to submit an entirely new specification. If, instead, he went to the lawyer and said “How about a car that determines for itself whether someone is fit to drive it” – then he doesn’t have an invention yet, he has brainstormed a general concept as the first step toward making an invention. In this case it’s ultimately the “inventor”s fault for not actually inventing.

              It is NOT an obviousness issue, because there’s no disclosure of an actual machine, so we can’t measure if that machine is obvious compared to other machines. I can show you how the IDEA is obvious, because we have a police analog, so I can reject the claim under 103. But that’s no different than if you submitted an old song to me – I can prove the song preexisted and issue a rejection under that, but the song was never something that could have been the subject of a patent anyway and the better rejection is to say that the subject matter isn’t even eligible.

              1. 1.2.2.1.2.2.1

                Oh anon, we all know you don’t know anything about what the law actually says.

                Random, you continue that meme that Malcolm imbibes in and you obtain the same ludicrous results.

                but that’s no different than if you submitted an old song to me

                It is clearly you that does not understand 101 (really? You want to attempt a non-Useful Arts example again?)

                It is of little wonder that you “think” that your legal views “have merit,” given the relentless propaganda that Malcolm has spewed on this forum for nine years and running, but you had better believe that real law by real lawyers is indeed important for these types of discussions.

                1. Random, you continue that meme that Malcolm imbibes in and you obtain the same ludicrous results.

                  No, I was referring to a certain board that keeps score.

                  It is clearly you that does not understand 101 (really? You want to attempt a non-Useful Arts example again?)

                  A judicial exception case is just as ineligible as any other ineligible area.

                  It is of little wonder that you “think” that your legal views “have merit,” given the relentless propaganda that Malcolm has spewed on this forum for nine years and running, but you had better believe that real law by real lawyers is indeed important for these types of discussions.

                  I don’t know why you make it about Malcolm, when I neither agree with many of his points nor follow him. My viewpoint was informed by historic Supreme Court precedent which (surprise) was reaffirmed by the current court. I don’t “think” about views that “have merit”, I simply read what former courts say and expect the current court to follow it, and lo and behold, it does.

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