Supreme Court: A Good-Faith-But-Incorrect-Belief that the Patent is Invalid

by Dennis Crouch

Someone who induces infringement is just as liable for infringement as the one who actually commits the underlying act of direct infringement. 35 U.S.C. § 271(b).  However, unlike direct infringement, inducement has a substantial mens rea or scienter requirement that the inducer knew at-the-time that the induced conduct would infringe the particular patent. In Global Tech (2011), the Supreme Court held that the knowledge element can be satisfied by proof that the inducer was willfully blind to the risk of infringement.

In Commil v. Cisco, the Federal Circuit addressed a slightly different question — and that question is now pending before the US Supreme Court:

Does an inducer’s good faith belief that a patent is invalid negate inducement liability?

One way to think about this is to go back to Global Tech and ask what the Supreme Court meant when it said “infringement.”  Was the Court referring only to the elements of proving direct infringement under 271(a) or instead was the Court referring more generally to infringement liability.  While 271(a) is a narrower concept that generally ignores validity issues, the broader concept of infringement liability draws-in defenses that may be available such as invalidity or unenforceability.

An important consideration here is that this good-faith-belief of invalidity is only critical for the discussion if it turns out that the asserted claims are actually valid and enforceable. So, we’re really talking about a good-faith-but-incorrect-belief that the claims are invalid. In this type of situation, I worry about the generation of self serving evidence that fall under the CYA/BS classification.

In any event, the Federal Circuit panel here ruled that “evidence of an accused inducer’s good-faith belief of invalidity may negate the requisite intent for induced infringement.”  [See Rantanen on Commil]. The patentee (Commil) then petitioned for Supreme Court review and the Court asked for the views of the US Government.

In its newly filed amicus brief, the US Goverment (through the Solicitor General) has agreed with the patentee that the Federal Circuit is wrong and that the accused’s invalidity belief is irrelevant to the question of inducement liability.

This Court should grant Commil’s petition for certiorari (No. 13-896) with respect to the first question presented. The court of appeals erred in holding that a person who knowingly induces another to engage in infringing conduct may avoid liability under Section 271(b) by demonstrating that it had a good-faith belief that the infringed patent was invalid. This Court’s review is warranted to prevent defendants from avoiding inducement liability on a ground that is inconsistent with the text, structure, and purposes of the relevant Patent Act provisions.

In its analysis, the SG basically walks through the statute (that separates the notion of infringement from invalidity defenses) and the key cases of Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476 (1964) (Aro II) and Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011).  In particular, with Aro II, the patentee had mailed a pre-suit notice letter to the defendant and the Supreme Court in that case seems to have treated that communication as conclusively satisfying the mens rea requirement.

Commil’s petition included a second question and Cisco also submitted its own question – both of these involved the necessity and propriety of ordering a new trial.  The US Government amicus brief recommend that neither of those questions be reviewed.

Read the USG amicus brief here.


30 thoughts on “Supreme Court: A Good-Faith-But-Incorrect-Belief that the Patent is Invalid

  1. 7

    Has a court ever decided a claim or a patent is “infringed” while at the same time deciding that the patent is “invalid” (maybe for an unrelated reason).

    If so, then a patent can both be infringed and invalid.

    If so an inducer could have a belief that he is inducing “infringement of a claim of a patent” while at the same time having the belief that “the patent is invalid”.

    His good faith belief then of the invalidity of the patent would be independent of his knowledge of his inducing infringement of a claim of the patent.

    1. 7.1

      “Well, Coach, what if the other kid wrestling was a robot? And what if he had a detachable robot arm? What then, Coach?”

      Greg Warren (comedian of some note).

  2. 6

    In this context, it seems to me that the “good faith belief in invalidity” makes more sense than the opposite rule.

    Remember: we’re talking about a defense to induced infringement, not direct infringement.

    If X has a claim that is so ridiculously broad on its face that it covers the prior art, or it covers a method I’ve been practicing publicly for years (especially where the infringer has suggested that it’s that method which is infringing its claim), or the claim is plainly ineligible, or the claim is laughably indefinite, there aren’t any good policy reasons to require me to “do something about it” before I tell someone else to practice the claim.

    That’s doubly true if I’ve got a reasonable opinion (or two) from a patent attorney wherein the situation is set forth in detail.

    Now let’s say that after I’ve been “inducing” for a while, a shocking new case appears doing a 180 degree turn on the law and the grounds for my good faith belief in the patent’s invalidity are destroyed.

    Should I be liable for inducement of infringing acts prior to the change in the law, where those acts would not have constituted infringement? If so, why?

    1. 6.1


      Do you recommend not following the law for anything that you personally feel is “not valid?”

      Whether something is laughably indefinite, facially invalid (to you), or any other subjective state (again, to you), does any of that matter when it comes to advising clients on the legal ramifications of making these judgments in light of 35 USC 282?

      Lawyerly opinions are not adjudications under the law – and cannot change the presumption (that is why in part that any opinion advice comes with its share of caveats).

      I certainly hope that you are not telling your clients to openly infringe patents based on how you feel about them.

  3. 5

    The validity of the patent is irrelevant — by statute it is presumed valid and one must act accordingly until the patent is invalided in court. What is relevant is whether the induced conduct infringes and whether the inducer had good reason to know that the patent covered that activity.

    There is no privilege to deliberately infringe a patent.

    1. 5.2

      Dennis makes reference to “actual” invalidity as an attribute of a patent independent of its “history” before the courts, such a state being something one can think about / have a good faith belief.

      Ned, does your position deny such a state exists independent of a decision? That a patent simply IS valid until invalidated by a court, and it does not matter that an infringer believes the patent WOULD be invalidated in court if it ever were to be litigated, and that the infringer must accept the patent is, until then, valid?


          35 USC Sec 282 –

          “A patent shall be presumed valid.”

          This law is binding on … who?

          Who “shall” “presume” a patent is valid?


            The statute does not limit who. It is the law.

            This is going to be easy for the Supreme Court.



              Since this touches on “mens rea”, can this (or any) law dictate what a person is to “believe” or “presume”? I think not.

              It would be eminently absurd for a statute to attempt to dictate a persons belief, presumption or mental content of any kind. Such stipulations could not be complied with (ignoring the fact that it would a draconian futile attempt at negating free will), a person thinks what they think. As a matter of fact, people would have to admit non-compliance all the time… pure silliness here is make a point.

              As such, the law must be about the legal status of the patent rather than any statement or order regarding the “presumer”, i.e. it is relevant in the legal context and it is the patent itself at issue.

              I would interpret the statute as saying something like “For the purposes of any legal determination, the patent shall be taken as valid until a decision has been made before a court of law that it is invalid.”

              Do you agree Ned?


                Anon2, you do realize that the Supreme Court decided 5-4 that knowledge of the patent was required because of the wording of the statute in §271(c) despite the clear legislative history to the contrary. Traditionally, prior to 52, knowledge of the patent was not required for any kind of infringement.

                Extending the knowledge requirement beyond knowing that that the activity induced infringes is not supported by the legislative history at all.

                But furthermore, the statutes also require us to presume that a patent is valid.

                I think, from Aro II, all that is required is that the inducer know that the activity induced infringes.

      1. 5.2.2

        “That a patent simply IS valid until invalidated by a court”

        My 2 cents – no. It is legally presumed to be valid until invalidated by court. But once invalidated by a court, it never was valid.

        Otherwise (if the patent “simply IS valid until”), then damages could run from first infringement until date of invalidation.

  4. 4

    I thinks a goof faith belief does not prevent any liability for direct infringement. With that said, they should not avoid any liability for induced infringement as well.

    1. 4.1

      That’s nice and simple, but it ignores the fact that inducement has a state-of-mind element, while direct infringement does not.

      1. 4.1.1

        Of course it does, no one would argue with you there. Among other things, an inducer has to be put on notice of the patent and its infringement.

        The question is whether an incorrect, good faith belief should be a defense to induced infringement.

        Tough issue. The Solicitor General has picked one side. The most interesting thing to me is that, presumably, this is an Obama administration official taking a pro-patentee position. That has not been happening too much lately.

  5. 3

    Even if they are aware of evidence that in their mind, and the opinion of their counsel, clearly disputes that presumption of validity?

    What if they were selling the same product they had always been selling, and with an earlier priority date? Should they still bow down to the presumption of validity, go through the costs of an IPR proceeding, and stop selling in the interim?

    1. 3.1

      I’m not sure what you are getting at.

      If the patent is invalid, knock it out in litigation or IPR.

      The question is whether it is good policy to allow accused infringers to avoid induced infringement liability by claiming some good faith belief in invalidity that later turns out to be incorrect. Presumably, this good faith belief can persist until all good faith appeals on the issue of validity have been exhausted.

      Affirming Commil greatly incentives defendants to extend a litigation just to avoid such a final judicial determination for as long as possible.

      1. 3.1.1

        That is ignoring the fact that interest accrues on the D.C. infringement damages award, and also continued infringement after the D.C. decision can have a higher damages rate and even be further increased up to trebling in amount for willfulness, if the Fed. Cir. does not reverse on appeal to find invalidty or non-infringement, which can occur with or without this Commil decision.


          But Paul. If the patent is actually invalid then there are no damages. The principle at stake here is only substantively important when the inducer is able to convince itself (in good faith) that the patent is invalid but then it turns out that the patent is valid.


          There are so many enforcement scenarios you are missing.

          What if all your patents are method claims performed by a smartphone? The handset vendor is an inducing infringer in most instances. If the vendor has a good faith belief the patents are invalid (but is incorrect), when does inducement kick in? After the trial court judgment? Appeals? Never?


            Patent, soooo …. the smartphone vendor knows of the patent and has an opinion of counsel that the patent is invalid — which is interesting because most counsel will give you an opinion that the patent is not infringed if that alternative is available. A reasonable conclusion may be that they know that the smartphone infringes when used.

            Regardless, there is no inducement infringement until there is direct infringement. I would therefore view it as the inducer is responsible for the damages of his inducee.

  6. 2

    Note the Brief of the Solicitor footnote comment that “12a, it is unclear how there could ever be circumstances in which the defendant believed the patent was invalid but still intended to induce infringement.”
    That does not strike me as an appreciation of economic or patent law reality. Assume a client says to its law firm that it could make, and its customers could save, millions of dollars, by selling a particular part or software to others, but the client is aware that that someone else has a broad claim that would probably be infringed by those customers using your clients part or software. A formal validity study is conducted by the firm, great prior art is found, and a formal invalidity opinion is provided. Is the law firm really going to tell its client, and is a client really going to accept, the following counsuling: “Sorry, even though we are quite sure this patent is invalid, you are not free to sell your part or software, because the Solicitor thinks a good faith belief in patent invalidity is irrelvant and no defense to inducing infringement, even though normally invalidity is a complete defense to a direct infringement suit and would normally not be a competitive marketing deterrent. ”
    Does deterring price competition that way make any economic public policy sense?
    What am I missing here?

    1. 2.1

      I don’t think it’s necessary to get into the minutiae of your second-to-last sentence, because IPRs now provide a comparatively inexpensive proving ground for the “great prior art” you mentioned earlier. If you really have a good faith belief that a patent is invalid (but you haven’t been sued over it yet), you should be able to file an IPR and perfect your good faith belief into actual fact.

      1. 2.1.1

        First, an IPR can only challenge validity on prior patents or publications, not any other grounds of invalidity.
        Secondly, as “James”notes above, that would mean telling all clients that if they runs accross any patent that might be infringed you would tell them to stop making and selling all their affected products until after the IPR is decided and appealed to the Fed. Cir., no matter how clearly invalid, no matter how high the odds of invalidity success and no matter how big the business loss that would entail??? [A business loss which could easily exceed the limits of most malpractice insurance policies.]
        Apparently only some folks in the Solictors office believe that is what goes on in the real world.

    2. 2.2

      I think the point is this: what is induced is the direct infringement of the direct infringer. That is actively induced when one has knowledge of the patent, the likely infringement of the patent and proceeds nevertheless.

      The analysis should be as to whether the claims cover the activity of the direct infringer. If so, the person intends to produce infringement. If there is a good faith belief in non infringement — well that might be an excuse, but that is not this case.

      I would be surprised if the Supreme Court ruled in any other way.

    3. 2.3

      If that someone else comes after client, ask client to send opinion letter to someone else with the following note: “If you persist in litigation after being shown your patent is hopelessly invalid, we will kill it in IPR and seek damages and attorneys’ fees for frivolous lawsuit/patent misuse/antitrust violation, etc.”

  7. 1

    It seems to me that the presumption of validity is particularly instructive here. Faced with an issued patent, a defendant’s route to showing invalidity is to prove it in court. From there, the proof is in the pudding, so to speak – if the defendant had a good faith belief that the patent was invalid, they should have been able to prove it. Absent that proof, the presumption of validity rightly controls, and every potential infringer made aware of a patent’s existence should likewise be aware of that presumption.

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