Oral Arguments in Commil v. Cisco

by Dennis Crouch

Today, the Supreme Court heard oral arguments in the pending patent dispute Commil v. Cisco, Case No. 13-896.  The Patent Act creates a cause of action for actively inducing infringement of a patent.  Here, the Federal Circuit ruled that a defendant’s belief that a patent is invalid is a defense to induced infringement under 35 U.S.C. § 271(b).  That decision is being challenged here — The patentee (Commil) argues that the mens rea requirement for inducement focuses on infringement rather than validity.  The transcript is an interesting read.

Of course, invalidity of the patent is always a defense and so the issue is only critical if the defendant had a good faith belief of invalidity but the patent turned out to be valid.

JUSTICE GINSBURG: This question would come up only if the patent had been held valid.

The rule does, however, offer some additional procedural and evidentiary benefits – for example a good faith belief of invalidity should be easier to prove than invalidity itself. By taking the case, the Supreme Court suggests reversal, however, that result is not guaranteed here.

In his questioning, Justice Scalia focused on the idea that aiding and abetting requires wrongful intent, and practicing an invention covered by an invalid patent doesn’t seem wrong.

JUSTICE SCALIA:  It’s a type of aiding and abetting liability and both in tort law and in criminal law.  At the common law, it was clear that you’re not liable as an aider and abetter unless you have a wrongful intent.  . . .   It ­­ it seems to m­e that if you don’t know that you’re infringing or that you’re encouraging somebody to infringe is ­­ is no ­­ no worse than you’re not knowing that the patent is valid. . . . You’re just talking about supplemental liability for somebody who induced that violation. And generally, for that kind of liability, we have required mens rea. We have required knowledge that you’re doing something wrong.

The patentee’s response was threefold:

 MR. WERBNER: Well, under the court’s Aro 2 case that the Court described in Global­Tech’s as a fixture of patent law, the Court specifically there recognized that once an accused infringer received actual notice of the patent and is put on notice of the infringing conduct, that that ­[invalidity belief] that creates no defense to that person. . . .  [Second], there are [now] streamlined procedures available [for invalidating invalid patents]. . . . [Third] textual meaning of 271(b) [focuses on infringement not invalidity and] Congress knows the difference between invalidity and infringement.  Where Congress is addressing both, it says both.

Arguing for Cisco, Seth Waxman’s primary point fell in line with Justice Scalia’s statements:

 MR. WAXMAN:  If you go back to the common law . . . [a] defense was available [for] someone who didn’t have that belief was not culpable and, “morally wrong.”

Justice Sotomayor queried whether infringement and invalidity were really two sides of the same coin since a broadly interpreted patent is likely to be invalid while a narrowly interpreted patent is likely to be not infringed.

A good amount of time was focused on the court considering how to deal with the reality that a large percentage of challenged patents are held invalid.

CHIEF JUSTICE ROBERTS: You mentioned the presumption of validity. What percentage of patents that are challenged are found to be valid.

MR. WERBNER: Well, Your Honor, from the briefing, it appears a high number; 40 percent was an estimate.

CHIEF JUSTICE ROBERTS: Well, 40 percent of the patents are found to be valid?Invalid.

MR. WERBNER: Invalid.

CHIEF JUSTICE ROBERTS: Invalid. So only 60 percent are upheld. That’s not much of a presumption of validity.

MR. WERBNER: Mr. Chief Justice, I would submit that it would be for Congress to change the presumption of validity, if it’s out of line. . . . And it’s more than just a procedural mechanism, it’s a message that patents are presumed valued. They should be respected not just by judges and juries, but by the public who are told that until proven otherwise, patents are presumed valid. And someone who wishes to gamble on their belief that it’s invalid should bear the consequences if they’re wrong. . . .

JUSTICE KAGAN:  You’re quite right in your reply brief when you say that this is a tradition in American law, that we assume that statutes are constitutional, that we assume that contracts are valid, that’s right, but it’s because they really are.  You know, almost all statutes are constitutional.  And here we’re in a different universe entirely, aren’t we?  Where, you know, you could flip a coin as to whether a patent is valid or invalid and be pretty close, right?  It’s about 50/50. . . .

CHIEF JUSTICE ROBERTS:  Is that a ­­ is that an historical development?  Did more of them used to be valid, however many decades ago and, it’s sort of changed recently?

MS. ANDERS (US Gov’t): I think it makes sense to say that a good faith belief in invalidity is not a defense ­­even though 40 percent of patents may be invalid.
. . .
JUSTICE KAGAN: Well, but that might be a very good reason for Congress to take a new look at this presumption of validity. But [Cisco’s] problem is that this presumption of validity exists and that this question of validity functions in a patent suit only as an affirmative defense.


181 thoughts on “Oral Arguments in Commil v. Cisco

  1. 17

    The Court seems to make a big deal out of the fact that litigated patents are found invalid around half the time, but under some sort of fictional rational actor hypothetical isn’t this about what you would expect? It would seem like parties would be most likely to litigate the validity of patents where that validity is indeterminable and it is a coin flip as to whether they are valid.

  2. 16

    How would you explain the consistency between the willful blindness doctrine of Global-Tech and 35 USC 298? It seems very hard to prove willful blindness if you cannot use the fact that the defendant did not seek an opinion.

  3. 15

    This is just ridiculous. Congress needs to do something about these 9 treasonous people.

    The Constitution says Congress may make laws regarding patents. The Congress made a law saying that if the executive branch issues a patent it is to be presumed valid.

    I think what has happened is that somehow the 9 have decided that they are really the ones in charge of patents because of their early federal common law on patents. Really, this is starting to amount to treason.

    1. 15.1

      You know, any rational person would see that the 9 have gotten so out of line that serious consideration should be given to removing all 9 and starting over.

      It is not just patents but many areas of law. I think it is so obvious with patents because the Constitution expressly gives the legislative branch the authority over patents–not the judicial. Their federal common law became null and void with the 1952 patent act and yet they consistently misrepresent this fact. They really are treasonous in their behavior.

    2. 15.2

      If you actually read some of this transcript, you realize that the 9 act as if the 1952 Patent Act was just full of advisory recommendations for how their laws should be interpreted. It is outrageous.

      (By the way, again, this is just more clear for patents.)

    3. 15.4

      Oh that’s special. An honored legal scholar determines that all nine justices of the high court are treasonous….. and that same eminence suggests that you shouldn’t listen to the viewpoints of people without similar qualifications in training, considered judgment, and experience as his own….

      So to get this straight- Congress passes a law that says the sky is brown, courts look up and see blue half the time, and it’s treason for them to suggest that the law may not be tenable?

      Oh…Okay then. The things you can learn on the Internet these days……

      1. 15.4.1

        Nice to have the infringing heckler bark in. Not having any legal training, I guess, means that you can’t sort out what I’m saying.


          “Nice to have the infringing heckler bark in.’

          Easy bro. Talk about people going all full on defamation up ins.

      2. 15.4.2

        The thing is, Martin: NWPA is hardly alone in making such statements.

        That’s what makes the microworld of “patent law experts who love patents” so wacky and wonderful (from a sociological point of view, anyway).

        They really believe they are super smart and super serious but when the going gets rough you find out very quickly they are really just super entitled and super greedy and not just a little bit ignorant.

        You should have been around here for the discussions about Prometheus v. Mayo when their little entitled heads were exploding left and right as their favorite drafting trick got flushed down the tubes.


          The paid blogger and the barking infringer* agree. What a surprise.

          (*Or alleged infringer or whatever. All we know for sure is that he doesn’t file patent applications and complains bitterly that anyone should get a patent.)


            Yes, my writings here show nothing but contempt for patents and belief that nobody should get one. So says the honored legal scholar who apparently can’t read. How about this: the moment I invent something worthy of a patent, I promise to apply for one?

            Of course, in this world, falling out of bed in the morning should be a patentable method. Independent claim: still drunk from last night. Dependent claim: on Pabst taken from a stainless mug.

            Is heckling a heckler a kind of meta-heckling? mmmm

            Metaheckler….good screen name come to think of it….

    4. 15.5


      It would be great if comments could be a place for rational discussion of patent law issues, but instead you get posts like this which is asserting that the Supreme Court is treasonous.

      It would be awesome if people could register with their name and Reg. No. and you could filter comments to only view those by registered patent attorneys.

      1. 15.5.1

        After reading a couple more posts for context, I think I understand where the post is coming from. Comment retracted as to this post, but there are a lot of posts on here that just make it hard to sort through any actual discussion.

  4. 14

    With Justice Breyer’s recent comments about the “worth” of oral arguments in mind, I find the “tea leaves” not all that interesting…

    A problem inherent in being the “highest” court is the susceptibility of thinking that “You” are above it all and can do whatever (and thus inviting the sycophants that wish that some other legislation were in place).

    1. 14.1

      With Justice Breyer’s recent comments about the “worth” of oral arguments in mind, I find the “tea leaves” not all that interesting…

      And yet this makes about 28 posts from you on this page.

      1. 14.1.1

        Did you have a point that you wanted to make? Because, like, you know, you actually counted the posts, but did you bother to see how many were geared to the tea leaves?

        You just can’t help yourself, can you DanH/Leopold? And yet another smarmy but ill-advised post from you.

  5. 13

    It is axiomatic that an invalid patent is not infringed. …. judge Rich “that invalid claims can’t be infringed is a nonsense statement”… chicken. .. egg … chicken. .. egg ……

    1. 13.2


      What is axiomatic is that there is no liability for infringement with respect to an invalid patent.

      271(a) provides that whoever makes uses or sells etc. a patented invention infringes. There is nothing in this about validity, just that the invention be patented. Invalidity is a defense under 282. It negates liability.

      1. 13.2.1

        Thanks Ned – as you can see, some clamor for answers already there. Here, there already is the structure (validity as a defense).

    2. 13.3

      Great quote.

      That’s how Judge Rich thought of it, sometimes. He also said “The claim being invalid there is nothing to be infringed” in Richdel v. Sunspool, 714 F.2d 1573. This leads directly to his corollary that “an invalid claim cannot give rise to liability for infringement.” What is the difference. The phrases are not inconsistent. I wonder why he thought the oft repeated axiom was nonsense? It never affected any outcome in any case (that I know of).

      In the same time frame, other Federal Circuit cases held that an “invalid patent cannot be infringed.” For example, Schering v. Optical. Archer, no dope, held that “invalid claims cannot be infringed” in Banner Engineering v. Tri-Tronics.

      The axiom is still in use: “because invalid claims cannot be infringed, we affirm ….” from Specialty Rental Tools, v. Boyd’s Bit Service (2003). Viskase v. AMC (2001) also states the axiom.

      The axiom stems from some ancient case law, like 19th century Supreme Court decisions.

  6. 12

    JUSTICE KAGAN: You’re quite right in your reply brief when you say that this is a tradition in American law, that we assume that statutes are constitutional, that we assume that contracts are valid, that’s right, but it’s because they really are. You know, almost all statutes are constitutional. And here we’re in a different universe entirely, aren’t we? Where, you know, you could flip a coin as to whether a patent is valid or invalid and be pretty close, right? It’s about 50/50. . . .

    In the so-called computer-implemented “arts” it’s way, way worse than that.

    Hilarious to see the true believers downthread pretending otherwise. But, hey, that’s what they do.

    Remember folks: it’s the insistence that patents on logic and information are the most important patents and the judge-built foundation of playing cards propping that mythology up that has driven the patent system into the sewer.

    This was all predictable, as is the final solution. In the meantime, stay tuned for more rich entitled people whining about their “constitutional rights” to threaten the 99.99% of non-patent grifters with their captured-agency granted junk. Again: it’s all these people know how to do.

    Maybe later one of these “innovators” will pop up and advocate impeachment of the Justices because they don’t love patents hard enough. It wouldn’t be the first time …

    1. 12.2

      “This was all predictable, as is the final solution”

      The denoument, based on Supreme decisions and the bill before Congress, appears to be to weaken all patents, make patent litigation more advantageous to richer and more powerful companies, and do nothing at all for small companies or patent quality.

      Nobody is even talking about a return to Flook, Benson, and the reasonable simple perfect solution of simply keeping an impermeable wall between software and patents. Without such a division, information will always be patentable with simple clever drafting.

      So instead, all patents and the system that drives so much progress will weaken more and more in response. This years’s changes will be just the beginning as more and more abuses accumulate and more weakening will continue because the abuses will not stop while software is considered eligible.

      Also: ‘final solution,’ MM? Seriously?

      1. 12.2.1

        “Nobody is even talking about a return to Flook, Benson, and the reasonable simple perfect solution of simply keeping an impermeable wall between software and patents. Without such a division, information will always be patentable with simple clever drafting.”

        Not sure what that means exactly. If you’re saying no one thinks Benson should be overturned, you have not been here long enough!


          Clearly, the last word in Bilski that Diehr cabined both Flook and Benson – as well ig noring the points within each of those two earlier cases (i.e. “We do not so hold”) is lost on both the anti-software “Owen” and the ever polite (?) cheerleader.


            I’ve literally never heard anyone here (except Martin maybe….) say that software is patent ineligible per se…


              Go, not all software. Just software that results in further processed information. If the software is used as a controller of a physical structure or process that passes the M0T test, I think it should be eligible. Same goes for methods.

              If you cant pass an MoT test, you may have utility, but you don’t have a patentable thing IMHO. That may change someday with some other kind of technology- I think a statute similar to the doctor’s exception could be written for software/methods to preserve that possibility. Yes anon, I get what a ‘clue’ is. A STRONG clue I might add….

              OTH, some nations don’t allow software per se so it’s hardly otherworldly to consider the possible benefits. The costs of unbounded software patents are obviously extreme.


                hardly otherworldly to consider the possible benefits.

                The point of the matter Mr. Snyder, as Mr. Katznelson and others have attempted to show you, is that you have been steadfastly attemptin to NOT consider the historical benefits and leading status of this country because of our past view on allowing patents for innovations under the existing law – not your wannabe-law-should-be-something-else.

                Your selectiveness is your undoing. You have zero credibility (and whether or not you use your own name is absolutely immaterial).



                For a variety of reasons, the “if the software is used as a controller of a physical structure or processes…” standard doesn’t seem to work, to me. It just creates a new level of drafting tricks.

                For example, take the silly software in your case. Would it really matter if the software caused a computer monitor to display the results? MoT though, right?

                1. Displaying results to a human being does not pass MoT.

                  The problem(s) with the patents in our case go well beyond the 101 issue. Obvious, anticipated, divided infringement, laches, ….but the litigation abuse stems from the tiny real potential damages, that we ditched the accused method when we found out about it, the unhinged demands for back royalty that likely exceed all of our profits in the period for a separately accounted for subcomponent that contributed not even 5% of revenue or any profits in the period, the age of the thing – 15 years at filing, now 18 years, the utter insignificance of either us or the feature except as tools of extortion, the huge damage to us of the litigation v. the utterly immaterial costs of endless, meaningless litigation to the plaintiff…. The whole travesty is a perfect miniature of the damage mid ’90’s software patents can do in the hands of bad actors.

                  Yea, so that got me active about software patents. But I have put a lot of thought into my position, I have read a lot of cases, and unlike the many professors and honored thinkers here, I have been in the software business trenches for 20 years, and I understand what drives sales, profits, and innovation in the space. It ain’t patents.

                  Patents are critically important when properly used, and I’m not even anti-software patent. I am against patenting ideas rather than structures or processes that have physical results in the world. Processes or methods that merely inform human action? They cannot be fairly adjudicated and they should not be granted exclusionary rights, no matter how novel and useful, because once you start patenting ideas, you cannot contain the costs or damages. We have seen that. The Supreme Court sees it. People in my industry see it. Responsible patent lawyers see it too.

                2. Martin,

                  I think we mostly agree. I’m not saying displaying results to humans passes the MoT test.

                  I’m saying that I think configuring a monitor to display a particular thing passes the MoT. The computer monitor is real, physical thing that is being changed by a computer program (color, electrical current, etc.)

                  Maybe there is some case law I’m not aware of?

                3. Maybe there is some case law I’m not aware of?

                  It is difficult to believe, Go, that you are unaware of the fact that Mr. Snyder’s views are NOT based on actual law of any kind (statutory or case law), and only engages in pure “Belieb” fantasy law…

                  You have to understand that when he uses terms of art, he does not care to use those terms with tier art-specific meaning, a meaning that IS tied to real law.

                  If you are not clear on this you risk adding to the muddle and cacophony instead of bringing legal clarity and understanding.

                4. go arthur: I’m saying that I think configuring a monitor to display a particular thing passes the MoT. The computer monitor is real, physical thing that is being changed by a computer program (color, electrical current, etc.)

                  Can you give an example of the kind of claim you are envisioning and the specifics of the “MoT” test that you are applying?

                  “A display monitor configured to display [new non-obvious information]” is an ineligible claim because it protects the information being displayed. It doesn’t matter that the recited display monitor is a “real physical thing” because configurable monitors for displaying information are old.

                  The same is true of a claim that recites “A book configured to display [new non-obvious information].” Books are “real physical things”. They are also old and granting such a claim allows the patentee to protect the information, at least in the field of books. Therefore the claim is ineligible.

                  The programmable computer in Alice was also an old “real physical thing”, as was the computer/networks recited in ABL and all the other well-reasoned cases where computer-implemented junk has been tanked under 101.

                5. MM,

                  The whole point of my post and the post above is:

                  I think that the MoTT is inadequate for evaluating subject matter under 101 and just encourages drafting tricks.

                  Your post indicates you maybe think I was making the opposite point…

                6. For a variety of reasons, … doesn’t seem to work, to me.

                  I’m curious as to what “it” is that does not seem to work for you, Go…

                  What is it that these so called “scrivining tricks” are being applied to so deviously?

                  What is your agenda?

                7. Anon,

                  Oh c’mon, you know what I’m talking about. For example, Beauregard claims.

                  My goals are the same as (I assume) everyone else. A fair patent system that allows good claims and rejects bad ones. Also, truth, justice and the american way.

                  As I’ve stated many times, I don’t object to software per se, but struggle to articulate a good rule to separate the wheat from the chafe.

                  I’d love it if some of our software-inclined friends would help articulate such a rule, but all I get when I bring this topic up is indignation.

                8. I don’t know what you are talking about, and what is wrong with Beauregard claims and what is this with others to venture something less than what the law provides because of some philosophical thing against software (that you still have not quite elucidated)?

                  The question still stands because your “mom and Apple pie” answer simply does not fit.

                  Try again.

                9. Anon,

                  I feel like the problem is obvious. Over the past decade (or so), the USPTO has issued many, many law quality patents. Especially software patents.

                  That doesn’t mean software is bad, or that software patents can’t be granted properly. But, I feel like that point is required for us to have any common understanding.

                  If you grant that point, that there is a problem somewhat unique to software (but admittedly shared by other fields: Mayo, for example), the question becomes: How do we deal with this problem?

                  That’s the question I’m interested in. I see a lot of “that’s not a problem/that problem doesn’t exist.”

                10. Go,

                  My post of 6:03 pm remains unanswered.

                  Your “feelings” are not an answer.

                  Your still wanting something less than what the law actually provides is not an answer.

                  ALL art fields may have “bad” patents granted. You keep in ig noring the plain fact that the patent system was never built to have perfect examination as some rationale for blindly accepting a philosophical-based screed against a particular form of innovation, and that my friend is simply and entirely unacceptable.

                  You should keep in mind as well that this is NOT a battle of “recent” “poor quality as that kool-aid induced mantra goes, but has been a fifty year battle (as evidenced by Prof. Crouch on a thread awhile back with that very title).

                  Wake up son.

                11. “But, I feel like that point is required for us to have any common understanding.”

                  Well, there it is then.

                12. You can “feel” all you want, but rah has nothing to do with either understanding or the law.


                It is just bizarre that we have people saying how bad software patents are, and yet, we are the number one country in software — by far –. And this occurred under the encouragement of patents.

                We just either get the paid lobby, the ignorant developer (who in many cases wouldn’t have a job or couldn’t change jobs but for patents), the hurt infringer, the liberal professor who thinks they are restricting, or the paid professor who takes Google bucks.

      2. 12.2.2

        and do nothing at all for small companies or patent quality

        Supremes just did Nautilus. How did the FC run with that? I think your anger is misplaced.


          well, two judges in DDR basically undid much of the potential for Alice to clean things up, but until the SC draws a bright line test for software / methods as physical processes or structure, the rest of the system will necessarily suffer the inevitable distortions of patenting the unpatentable…..


          Innovation Act would not help small business and Alice and Nautilus are well on their way to being overturned by the CAFC.

          Stripping CAFC of patent jurisdiction and returning it to circuits would be the best reform possible. Add venue reform for small businesses so they be sued only in their home district and not some biased far-away troll district and you’d have the real reform we need.

      3. 12.2.3

        also: ‘final solution,’

        I admit … a terrrible choice of words. “End result.” “Conclusion of the story.” “Inevitable outcome.”


            Das ist nur eine Fehlleistung, angesichts der Propaganda Textbuch verwendet er…

  7. 11

    I’m loathe to make a full opinion before the actual audio comes out, as pauses are often as important as what people say. Here’s a good example:

    Waxman made an extremely important point towards the ends that has gotten little play. When the argument is limited to only good faith on infringement, it leaves the inducer’s mind only partially explored in a statute that is clearly designed to look into the mind of the inducer. This directly coincides with what Scalia began the case by saying.

    Invalidity and infringement are different things, but there is only one malum prohibitum – violation of the right to exclude. Historically Mistake of Law could serve as a defense to malum prohibitum offenses as they negate the mens rea, therefore you have to consider both. Kagan gets at the same point in a less fanciful way – she couches it in terms of someone “trying to figure out if they have liability” (two sides of the same coin) which is a pseudonym for the singular prohibition.

    Scalia also responds to a comment about conflating two things asked by Kagan, and his reponse is transcribed as “HE” said. The “he” would be Alito having penned Global-tech. I suspect that a large number of the court members simply think that they considered the issue in Global-tech.

    I suspect it will be affirmed with modifications simply for the pragmatic effect: Cisco gets over a letter a day, and Commil stated it is 18 months to do an IPR. What do you think it going to happen? The court is going to formulate a rule that requires Cisco to wait 18 months from every letter they get to avoid liability? Cisco would never produce anything!

    This is an example of the ridiculousness of certain types of overbroad uses of language (it rhymes with bunctional flaiming) coming home to roost. There is so much uncertainty in the law the defense will be construed broader to fix it.

    1. 11.1

      Random, “a statute that is clearly designed to look into the mind of the inducer.”

      The original drafters, Rich and crew, had no intention at all to change the law. All the law required is that one know that the acts one was inducing resulted in the particular product or process, the process that was an infringement. Knowledge of the whether the product or process actually infringed was completely irrelevant.

      Reading Aro II, it is manifestly clear that congress did not intend to change the law in this regard. The words they chose were inartful. Thus the majority held that knowledge of the patent was required.

      They required nothing more. Why in the fricken world are we expanding that requirement to the moon — moving ever further away from the intent of congress. We need to remind the Supreme Court that Aro II was 5-4 and of the intent of congress not to change the law.

      I see a news flash. Governor moonbeam has ordered a 25% increase in rainfall.

      1. 11.1.1

        Why in the fricken world are we expanding that requirement to the moon

        It’s subject to a good faith standard, it’s not expanding it nearly as much as you think.

        Just so we’re clear, if I had a patent on receiving intellectual property legal advice wherein the means of communication is electronic, you would cease all non-face-to-face contact with your clients?


          Just to be clear, no.

          But that does not mean I should not respond in damages if I am wrong in my conclusions about validity.


            Ned: that does not mean I should not respond in damages if I am wrong in my conclusions about validity.

            This issue isn’t whether “your conclusions” were wrong. That’s the starting point. The issue is whether your “wrong conclusions” were reached in good faith (e.g., a detailed opinion that the judge almost adopted as his/her ruling) or whether you just looked at the claim and said “This uses the term ‘function’ so it’s probably invalid.” Why shouldn’t that affect the damages calculation?

            The acknowledgement that “it’s easy to reach a reasonable but wrong conclusion about patent validity” is easy to make once we remember that people who very publically hold themselves out as professional “patent law experts” these days (e.g., many of the “patent law experts” who opined on Prometheus) got it completely wrong, as did a substantial portion of the Federal Circuit (a trend that the Supreme Court has been observing for years).

            This is where people need to start realizing that the standards for “good patents” are rock bottom from a “quality control” viewpoint. If the rate of bad sausage issuance was anything like the rate of junk patent issuance our society would probably have banned sausage production forever and never thought twice about it again.


            But that does not mean I should not respond in damages if I am wrong in my conclusions about validity.

            It’s one thing for the actual infringer to have to respond in damages. It’s another for everyone in the chain to have to respond.

            People sell things that are perfectly legal on their own and only infringe as part of a combination patent. If you let “notice only” control that situation you’ll have people extending their monopoly past the actual scope by threatening people with damages for supplying an essential element and therefore inducing the combination.


              There are similar and equally reasonablee considerations, along with a plain reading of the statutes, that will drive the Supreme Court’s rejection of the CAFC’s holding in Promega v. Lifetech, 9-0.

              link to patentlyo.com


                Great link for plain reading…

                Maybe you want to do a plain reading of 1 US 1…?

      1. 11.2.2

        How is it a false dilemma? Cisco makes things, those things can be used to infringe, and the question of whether it has substantial noninfringing uses is a question of law. Every time someone does something with your machine and you receive a letter, you’re potentially on the hook. There was clearly intended to be SOME defense – are you suggesting that the defense was “wait for an IPR in every case”?


          Random, among other choice is to

          1) take a license;
          2) design around;
          3) deliberately infringe and take one’s lumps when sued;
          and, of course,
          DJ or IPR.

          If software, the cost to do a fix is ridiculously low per the case between Apple and Motorola. The problem is, the likes of Cisco don’t like to do changes because they are locked in to certifications, etc. The license alternative might be the very best choice.


            Ned: software, the cost to do a fix is ridiculously low

            Not nearly as low as the cost to imagine a new function for a computer without ever disclosing any actual working software whatsoever.

            Not even close.

            That’s why the grifters love software patents more than anything else. If they were restricted to patents that actually required them to have any skill other than speculation it would ruin all their fun.

            Now watch ’em puff themselves up and pretend to be really offended by this.


            1) take a license;

            You’re not in a situation where you can stop production and simply eat your sunk production costs. You have product out there already that has to be recalled because your liability is out of your control now. Is that conducive to arm’s length negotiation? What incentive does your opponent have to offer you a fair value? Or for that matter, any license at all?

            2) design around;

            The very same patents that are most likely invalid due to overbreadth, the very ones there should be a good faith defense for, are the very ones that can’t be designed around.

            and, of course, DJ or IPR.

            If notice that you fall under a super broad scope is all that is necessary, then you’ll constantly receive notice until the patent system rights itself, which means you’ll constantly be doing IPRs. If a smartphone uses, how many was it? 2000 patents? How many patents over similar or overlapping subject matter with those 2000? Let’s conservatively say 1 in 100 patents have at least partial overlapping claims with another patent. That’s 20 letters you get. Even if they’re spread out only over a year, add in the 18 months and you’re looking at 2.5 years before you can actually produce on the lines you shut down to do IPRs.

            3) deliberately infringe and take one’s lumps when sued;

            This is, of course, conclusory, because it could just as easily read “3) formulate a plausible good faith argument which is actually accepted at the trial level before being reversed by the FC not knowing what it is doing and POSSIBLY take one’s lumps when sued”


              Who… ultimately pays $$$ for the lunps? (Me)… upfront costs (declaratory judgment, IPR, ex parte) it’s gotta be cheaper for me.. net net


            “If software, the cost to do a fix is ridiculously low per the case between Apple and Motorola.”

            This seems to be written by someone who has never written software before. Software is rarely easy to fix.

  8. 10

    OT, but in the other oral arguments before the high court yesterday, our Justices display the stellar logic that even knowing that a prior ruling is point blank wrong may not (in their eyes) warrant a decision “righting the ship,”

    See link to nytimes.com

    1. 10.1

      But Chief Justice Roberts suggested that the court might have a role to play.

      “The economists are almost unanimous that this is a very bad rule,” he said of the Brulotte decision, and he listed a number of precedents that the Supreme Court had overruled. “Those are all cases from the mid-1960s, just like this one was,” he said. “It’s a problem with the ’60s.”

      The case is Brulotte v. Thys, a case I have relied on myself when trying to get out of license agreements that had my client paying royalties long after the patent had expired.


          Actually, anon, I wonder at times that attorneys drafting these agreements don’t seem to understand that patents expire.

          I’ve actually seen numbers of such licenses from a variety of different businesses. It is like the rule of perpetuities. Recall the movie Body Heat where the incompetence of the attorney was the reason the widow to be hired him to do the will?


            it’s truly astounding how many organizations will sell you a “license” to nothing in particular. You read the agreement and there’s no property listed which could be licensed. Sometimes they don’t even use the word “know-how” or its equivalent. And the number of times they try to license you something not protected by any intellectual property or regular property law right is crazy too. And if there is an IP right, they don’t understand it at all. I’ve seen real agreements where they think calling everything a work made for hire makes any difference outside of copyright. Much less understanding works made for hire is more nuanced than tossing it on a piece of paper and calling it a day.

    2. 10.2

      It was a fascinating day at the Court on Tuesday. For Kimble v. Marvel, the justices seemed to fight tooth-and-nail on stare decisis and antitrust law… but if you notice, no one argued about patent policy. Everyone seems unanimous that the patent term cannot be extended by contract. I think this is a “bad facts bad law” type of situation, where they do not want to strike down an entire agreement because both parties were clueless that patents expire. I predict that they will write a very narrow opinion saving Kimble, but careful not to suggest that patent rights can be extended by contract.

      As for Commil v. Cisco, when reading the questions to petitioners and the government, I thought that Seth Waxman would have a cakewalk. But he got banged up, too. No one had fun arguing this one. They might overturn Globaltech. Short of that, they will try to twist a way out of it so as not to allow “good-faith belief of invalidity” to be an actual defense.

      1. 10.2.1

        Everyone was unanimous because no one was arguin that the patent term itself was even being attempted to be extended.

        The contract element and the patent term are two distinct items.

        The crux of the case comes down to actually realizing that these are two separate things and realizing that in this country that the freedom to contract may mean that payment terms and payment schedules may be such that two independent parties may come together and agree together on terms and schedules that are not locked into the actual patent term (funny, that the logic here applies bidirectionally, and yet no one seems to hint at having a problem with payments that end prior to the ending of the patent term…).

  9. 9

    And yet, so few commenters here of you can see how this state of affairs has arisen: software/method patents, sans a bright line test, simply cannot be reliably adjudicated, by their very nature.

    Software and methods are ideas, and patents are designed for things. Software that can pass the MoT test is a patentable thing. Software that cannot pass it is written expression, but not a patentable thing. Machines for information processing are things, but ideas about information processing are not things.

    Even discounting the selection bias for patents that are not challenged (and nobody ever adds back the flip side of that, which is that invalid patents are not challenged all the time because of the horrifying expense to do so), what would the invalidation stats look like if you backed out every software/method patent? What were invalidation rates before around 1980? The hundred years prior?

    Do I even have to ask?

    If you live by the sword of patenting IDEAS you will die by the sword of the necessarily resulting legal doctrine that makes patenting of THINGS far less effective. If you want presumption of validity back as a viable concept, stop patenting ideas that cannot be fairly or practically enforced as temporary monopolies. It’s that simple…

    You simply cannot have it both ways, and when peoplez refuse to face facts long enough….uncomfortable disruption occurs……

    1. 9.1

      I disapprove of your analysis, especially in view of the problem of characterizing a method as a “thing” within your construction.

      Technically, an “idea” is also a “thing”, albeit an incorporeal one.

      1. 9.1.1

        A method or “thing” that results in no physical change or has no physical structure is not a useful process, machine, manufacture, or composition of matter, no matter what semantics you apply. An instruction is not a thing- the result of following an instruction, or process may be a thing, and it’s thatthing which properly may get a patent.

        Such a simple notion, so completely perverted….


          Rubbish. I can only conclude that you are neither a patent attorney, nor do you otherwise have meaningful knowledge of substantive patent law.


            Quite clearly, Mr. Snyder, our friend IBP nails you on both accounts without having seen the enormous amount of muck you have thrown at the walls here.

            IBP, throw in the the factor of being a scorned defendant (unjustly accused, of course – with the Shawshank tones hanging in the air) and you have captured the essence of our friend Mr. Snyder.


              Your “thinking” my non-polite-through-redundancy friend, is once more clouded by your Belieb system and your desired ends.

              Mr. Snyder is far (far, far, far, far, far) from anything even remotely resembling the truth (or actual law).

              Wake up son.


                Obviously…but when nothing is a thing, the question isn’t about the law.

      2. 9.1.2

        IBP: Technically, an “idea” is also a “thing”, albeit an incorporeal one.

        So are dreams.

        “Technically”, anyway.

        Deep, deep stuff from IBP. Keep it up! “anon” loves it so it must be super devastating.


          More dissembling from Malcolm, who clearly needs to be reminded of the very real difference between software and the thought of software.

          I am reminded of Malcolm’s perpetual goal post moving to discussions of things TOTALLY in the mind…


            he very real difference between software and the thought of software

            “the very real difference between a correlation and the thought of that correlation”

            “the very real difference between a mathematical formula and the thought of that mathematical formula”

            “the very real difference between an example of logic and the thought of that example of logic”

            One is more dense, right? It weighs more on the surface of Jupiter? Less refractive? Melts at a higher temperature? Visible under a microscope?

            Too bad this “real difference” never shows up in any patent claims, at least not at the point of novelty. Now go ahead and tell us a story about how nobody is allowed to “dissect claims.” That was a funny one. You told it every day for about two years until the Supreme Court crushed your fantasy into dust forever and ever.

            Tell the story again, “anon.” It was funny.


              Is that the story about the exceptions to the judicial doctrine of written matter?

              Or the story that a manufacture is something by the hand of man (and that includes software), which said software can obtain copyright for a different aspect, but in order to obtain copyright cannot be a mere thought or something TOTALLY in the mind?

              Or is it the story that software is defined to be a machine component and is equivalent (and yes I will remind you yet again that the word is equivalent and not “exactly the same as”) to hardware?

              All of these are great stories. I can see why you never tire as to wanting to hear them.

              On the other hand, I still await any type of intellectually honest dialogue with you that understands and accepts these valid counterpoints and integrates them properly into the ongoing dialogue.

              Let’s see you step up to the plate and leave your stale rhetoric behind. Wouldn’t they be a great story? Or will we all yet laugh again at your failed duplicities…

    2. 9.2

      Martin, what exactly are your qualifications for making all these comments? It appears to me that you were sued once and you believe it to be unfair. Based on this you have decided to rant on here everyday about how unfair you believe the system to be. But, how much of the system do you really understand? From what I read of you–very little.

      1. 9.2.1

        Ahh yes, the classic second layer of defense. Please allow me to retort:

        Your little patent priesthood, built on legal arcana and mystique developed over a very long time, has been disintermediated by this very Internet. I hate to break it to you, but any reasonably intelligent person who devotes themselves to diligent study of the various IP Blog archives over a few years will gain a useful knowledge of all the key concepts- if not better than a useful knowledge on various important aspects like Section 101. I’m certainly highly unqualified to practice patent law, but I am quite well-informed enough to see the handwriting on the wall.

        This often happens with cancer patients- in time, they can become extraordinarily knowledgeable about their disease, and some go on to make great contributions as activists as a result.

        I’m glad to see Night that you have abandoned the “new machine” and “software and hardware are equivalent” canards and are now onto diminishing the legitimacy of the messenger. This is progress.


          So, basically you have very limited experience and no educational training and you haven’t bothered to read up.


          I, on the other hand, have been honored by one of the top patent law schools in the country for my scholarship.


            I, on the other hand, have been honored by one of the top patent law schools in the country for my scholarship.

            Is that right? Has that been “verified”?


            Well, despite my lack of knowledge or experience, I happened immediately onto the same key question as the Chief Justice:

            CHIEF JUSTICE ROBERTS: Is that an historical development? Did more of them used to be valid, however many decades ago and, it’s sort of changed recently?

            MR. WERBNER: I think more recently, there there is more of an issue.

            Gee, I wonder what might be the root cause of this development?

            It ain’t the Holiday Inn fellas….


              The fact that you still post here against the advice of counsel says it all, really. Sorry, you’ll never be viewed as an objective voice, just that of an aggrieved party to a lawsuit.


                bwahhahahahaha I am DYING to be seen as an objective voice by sockpuppets!

                No madam, I am trying to point out the obvious fact that software/method patents that can’t pass the MoT test have shredded the legitimacy of the patent system, not the least to the highest court and most of the ‘innovators’ the die-hards claim to seek to protect.

                I’ll never be objective about it!

                1. You are aware of what even the Supreme Court has actually said about your MoT, right Mr. Snyder?

                  (Hint: it was one of two 9-0 things in an otherwise fairly fractured Bilski decision)

                  It’s a wonder that your selective understanding has not yet picked this up…



                you’ll never be viewed as an objective voice,,

                LOL! So says the sockpuppet.

                Too funny.

                Maybe you should call yourself “anon3” from now on. Then people will really start taking you seriously.


              Yeah, Judge Rich.

              But it was also the folks in the PTO during that era. Start with the Directors, assistant directors and policy managers.


              Martin Snyder: “what would the invalidation stats look like if you backed out every software/method patent? What were invalidation rates before around 1980?” …. If you want presumption of validity back as a viable concept, stop patenting ideas that cannot be fairly or practically enforced as temporary monopolies. It’s that simple… You simply cannot have it both ways, and when peoplez refuse to face facts long enough….uncomfortable disruption occurs……”

              Indeed Martin, let’s “face facts:” “Invalidation rates before around 1980” were higher than those experienced after the proliferation of “software patents” (and what exactly are these patents?) See link to whitehouse.gov , showing that before 1980, validity of substantially less than 50% of adjudicated patents were upheld and that this fraction actually increased since then.

              So these facts simply do not square with your notions of causes and reasons. You should look for another explanation.


                Graph this in the mind.

                Before CAFC, validity rate 4.

                After CAFC, before Alappat/State Street Bank, validity rate 8.

                After those two cases, validity rate 6.

                After IPR, validity rate 3.


                I don’t understand the visualization scheme on page 15; you seem to be mixing infringement findings and invalidity findings in one value? Is there data on invalidity rates 1880-1980? Both the court and lawyers yesterday seemed to take it as fact that invalidity rates have increased over historical figures.

                Also PS, your assertions that there was no litigation explosion (by cherry-picking 2005 as your end-year) certainly did not age well.

                1. Martin: “you seem to be mixing infringement findings and invalidity findings in one value?

                  Are you unable to read a two-dimensional plot and read the values on validity only? There is no “one value” here. Focus only on the X axis (also, I hope you know how to read a Log scale).

                  As to “litigation explosion” and my last date point being 2005 – note that this was a 2007 presentation. You might want to read my recent litigation statistics paper “A Century of Patent Litigation in Perspective” which debunks the “litigation explosion” fabel. Read it at link to ssrn.com .


                Ron, how many junk patents were extinguished by Bilksi, Prometheus and Alice?

                Those patents and every patent like them were always junk. But the PTO still grants them by the boatload every week because their so-called “stakeholders” (i.e., people like you) aren’t mentally capable of accepting reality.

                There are more invalid junk patents out there than every before in the history of humankind. That’s a fact, Ron. Every year there are more of them and this has been going on at an accelerated rate for decades. And to the extent the door continues to remain open for grifters off the incredibly broken patent system it’s going to keep on like that.

                The “invalidation rates” of patents is meaningful only when those rates are viewed against the background of the type of patent that is being invalidated and why, who’s asserting those invalid patents, who is being attacked, and how often.

                For example, if 500 competing businesses in 1979 filed five lawsuits on five patents between them over structually defined claims directed to tangible products that each was producing and 3 of those patents were invalidated, it’s doubtful anybody would be going bananas one way or the other over the 60% invalidation rate. But that’s not remotely like what’s happening in our b.s. joke of a patent system.

                You do, recall, Ron, that a few years ago some folks went all the way to the Supreme Court with an argument that you could infringe a patent for collecting data using an old method and thinking a new thought about that data. You do realize that, don’t you? I know you don’t like talking about facts like that. You have never have acknowledged that fact as far as I can tell.

                Why don’t you acknowledge that fact, Ron? Why don’t you recognize that was a symptom of a huge problem that hasn’t really gone away (in part because of people who hope for opportunities to continue to exploit the patent system in identical or very similar ways)?

                1. Unless overturned on appeal, a jury verdict out of Delaware a week ago for IV against Motorola is going to be expensive.

                  Behold the “innovation”:

                  US 7810144, claim 41:

                  41. A communications device, comprising:
                  a processor; and

                  a memory that stores at least one program usable to control the communications device,

                  wherein the communications device is configured to:
                  display a collection of file identifiers, wherein each file identifier represents a selectable file;

                  receive a user selection of at least one file identifier representing a file selected to be transferred to a second device;

                  display a collection of destinations identifiers, wherein each destination identifier represents a remote device having a numbered destination address on a circuit switched or packet switched network;

                  receive a user selection of at least one destination identifier as selection of the second device;

                  display a data entry field in which a text message can be entered;

                  receiving the text message;

                  encapsulate the text message with the selected file into a single combined file;

                  generate a unique transaction identifier that identifies a transfer of the single combined file; and

                  send the single combined file to the second device at its numbered destination address, the second device being configured to:
                  receive the single combined file irrespective of user action at the second device;

                  generate a delivery confirmation message confirming reception of the single combined file;

                  transmit to an authenticating device of the communications network, the delivery confirmation message;

                  provide an alert indicating reception of the single combined file;

                  display an identification of the communications device in relation to at least one of the selected file or the associated text file, wherein the identification includes at least one of a communications address of the communications device, a name of the communications device, or a username associated with the communications device; and

                  display at least a portion of content of the selected file or the text message, wherein the authenticating device is configured to:
                  generate a delivery report that indicates a delivery event and a time of the delivery event.

      2. 9.2.2


        Have you read the patents at issue in his case?

        I know we probably disagree on the exact scope of 101, but regardless, you’ll have to admit these claims are at least somewhat….questionable.

  10. 8

    If I am inducing or “aiding and abetting” theft, say of 1000 little items of personal property from random people, and say I am in of the belief (which is reasonable but which may be true or false) that statistically speaking one of every two of those items are not legally owned (defects in title, stolen, etc.) is it a defence to aiding and abetting the stealing of all or 500 of those items of personal property that I believed they were not property of the “possessors”?

    What of those goods stolen from the rightful owners? Specific statistics aside, can I simply claim I thought he had been one of those non-rightful possessors (of which there are apparently many) to get away with aiding and abetting ACTUAL theft?

    1. 8.2

      I think they danced all around the issue that persuades me. Take a direct infringer and a party alleged to induce. Put them in the same case. Provide a notice of infringement to the alleged indirect infringer, the big bucks mastermind.

      Assume the patent is challenged and held valid.

      The jury is instructed to find infringement for the direct infringer – but to find noninfringement for the indirect infringer if he had a good faith belief that the patent is invalid.

      But what about simple justice here? The person who caused the infringement can be left off the hook because of his private belief that the patent is invalid while the person who infringes directly, but who otherwise is completely innocent, can be found liable?

      Since I’ve actually had cases like this where my client has been the direct infringer and has been caused to infringe by third-party, I am not sympathetic at all to letting the person who caused the infringement off the hook.

      I think Aro II was wrongly decided, should be reversed by Congress. But in the meantime, we should do everything we can to minimize the damage.

      1. 8.2.1

        Dennis, my post again needs moderation. Who be nice if we could better understand why posts are put into moderation.


          Probably has something to do with frequency of posts. Right now you’ve made 18 of the 54 comments. Higher quality than the others who tend to monopolize comments, but frequency’s a good proxy for what I assume the software is trying to catch.

      2. 8.2.2

        But what about simple justice here? The person who caused the infringement can be left off the hook because of his private belief that the patent is invalid while the person who infringes directly, but who otherwise is completely innocent, can be found liable?

        Ned, I’m not buying it. The direct infringer is in the same position as any other “innocent” direct infringer, and the same limitations on its liability apply, such as the limitation on back damages if no notice. How is this unjust?

        How about another case, where the alleged inducer has no assets or is unreachable, so the patentee chooses to sue only the direct infringer. Is this more just?


          Where do you make the assumption that the inducer cannot pay damages?

          Where do you get the assumption that if there is no notice there are no back damages?

          I will answer the rest next.


          I have been in cases like this: major company B supplies a part to major company B.

          The part sold for its intended purposed, when added to something B does causes an infringement of a method patent by B.

          What B does is a conventional process. The addition of part A causes the infringement. B did not order the part to have any special characteristics, just that it do X.

          Company A chose the design of the part with knowledge of the patent, but with a belief that the patent was invalid.

          Both are sued.

          B is liable. Why not A — A is the sole malefactor — the only one whose conduct should be restrained by the patent laws, and yet it is off the hook?


    2. 8.3

      In copyright, where there is no statute, whether or not one knows that one’s actions infringe is completely irrelevant.

      Is not there a maxim that ignorance of the law is no excuse? But the potential to fundamentally undermine the patent system as we know it is in the hands of the Supreme Court today in this case.

      No one intended in passing 271(c) and 271(b) to change in a fundamental way the law of contributory infringement. No one. And yet what we have here — a case of bad draftsmanship. The statutes can be read two different ways. The Supreme Court in Aro II split 5-4.

      I can assure that no-one engaged in the limiting the damage of State Street Bank gave any thought to the Supreme Court interpreting the new 273/prior use statute that mentions business methods to be an authorization of issuing patents on business methods. That exactly contrary to our intent.

      We had a good law of “invention” prior to ’52. There had to be an improvement — in functionality. A difference in kind, not degree. This was somewhat objective. But what we got out of the ’52 act was a completely subjective test they had two distinct points of subjectiveness – just who is this person of ordinary skill, and what would he think is obvious? Now we have Nautilus that speaks of “reasonable” certainty. Sounds good. But this is just another subjective test. Pure, unadulterated, cr*p.

      J’sus f’n Chr*st. Please stop amending the patent laws! Look at the unintended consequences. And, courts, stop it with these vague tests for this or that. (Bilski, Alice?).

      The LAW needs to been clear. There is a difference between law and equity. Equity seeks justice. Law sets clear and definite rules.

      1. 8.3.1


        You are incorrect: with respect to the copyright version of “inducement,” the Court explicitly held that there needed to be “culpable” conduct. This is why Sony Betamax was NOT infringing (even though they knew people were using their devices to infringe) whereas Grokster was.

        With respect to direct infringement (which is perhaps what you were referring to), it can be said that one doesn’t need to know it is infringing in order to be directly liable. But there is the concept of “volitional” conduct (see Cablevision). For example, AT&T is not liable if I read a copy of a copyrighted work over their telephone wires, even though technically they “distributed” it.

        The two are not as divergent as you believe.

  11. 7

    This is nutso stuff here. The law says there is a presumption of validity. That is the law. Period. We are in this bizzarro world where the SCOTUS doesn’t like patents. They don’t think they are necessary. They are completely ignorant of the world outside their chambers. None of them know anything about science or patent law.

    Ridiculous. They should request that Congress remove their jurisdiction from patent law.

    1. 7.1

      should request that Congress remove their jurisdiction from patent law.

      I have made that recommendation previously.

      Best thing though, is that as long as an Article III court is involved (say, a CAFC free from the bullying of the Royal Nine), Marbury would be respected.

      You also do know that Congress has the constitutional power of doing exactly this, yes?

      1. 7.1.1

        Of course I know Congress can do that. I too have been suggesting this. In my case I first suggested this 10 years ago. I think it should have been part of creating the fed. cir. I think Congress could create a hybrid where only portions of the cases from the Fed. Cir. would go to the highest court in the land staffed by boz0s.


          Let’s fact it as this country becomes more and more like a third world country the quality of the justice continues to decline. Obama is a new low for this country in appointing non-science people to the science Fed. Cir.

    2. 7.2

      While we’re at it, I suggest:

      Removing jurisdiction from criminal law, criminal procedure (none of the supreme have practices criminal law), bankruptcy law (same), Indian law (same), anti-trust (same), admin (same), water (same). I’m sure the list could go on.

      Maybe leave them with jurisdiction over civil procedure..they seem to know that area ok.

      1. 7.2.1

        So clever Go. Are there special courts for those areas of law? Is the Fed. Cir. the only court where subject matter defines it jurisdiction?



          I believe the respective answers to your questions are “Yes” and “No”.


          Also note the CAFC gets a lot more than just, uh, “science-y” cases.

          Lots of cats and dogs in there. Appeals from international trade/tariff appeals, merit system board/OPM, federal claims, veteran claims appeals, civil contract process appeals, who knows what else.

          I do understand the desire to have CAFC judges be patent attorneys by background. But I wonder does the bar of any of those other specialty appeals areas grouse that the CAFC judges are poorly grounded in their own (particularized) area of the law?

          Maybe so!


            Most of the other cases are tax cases where it would be good to have a science background so they can understand all the math.

            Probably the new Google Fed. Cir. judges can’t even add.

            Really. The second answer is “no” for federal appellant courts? I don’t think so.


              (second attempt. I may have contracted Heller-itis).

              Yes, the answer is “no” for federal appellate courts. At minimum, the bankruptcy specialty appellate courts come to mind.


                (Sorry, my first attempt had a lot more commentary in it, but it wouldn’t go through and eventually disappeared. Not sure what “trigger-word” was present.)

  12. 6

    Should the court require a judgment of invalidity by a court as a condition precedent to sustaining the defense of good faith?

    1. 6.1

      Are you mixing apples and oranges Ned?

      Is not the real issue here one that is the opposite of your question?

      The defendant wants to be able to say, “well, I do not care what the patent office says, I think that the patent is invalid, so I should not be held liable.”

      Is that not the bottom line here?

  13. 5

    I think the court is going to at least require a notice of infringement. That will create standing for one who has a good faith belief in invalidity to go to court for a declaratory judgment that the patent is invalid.

    I don’t know that the court will go further than that and permit a private belief that the patent is invalid gives someone a privilege to infringe.

    Scalia seems to be way out there if his oral argument is to be believed. He seems to strongly view that one cannot infringe an invalid patent. While that might be true, he doesn’t seem to understand that there are distinctions between the two.

    Proof of infringement does not require proof that the patent is valid.

  14. 4

    Chief Justice Roberts: “So only 60 percent are upheld. That’s not much of a presumption of validity.”

    Justice Kagan: “you could flip a coin as to whether a patent is valid or invalid and be pretty close, right? It’s about 50/50.

    These statements show a profound misapprehension of total probabilities and the effects of selection of disputes for litigation (Priest-Klein 1984). The near 50% validity outcome is only for adjudicated cases—the minority of disputes that are not settled. These are disputes at the margin where uncertainty results in the parties’ differing perception of their likelihood of success on validity. In all other patent assertions (the number of which dwarfs the number of adjudicated cases), the parties may have the same perception that a challenge on patent validity would likely fail. These cases do not reach adjudication—they end up in license agreements or settlements. The total probability of finding a patent not invalid is therefore much higher than 50%.

    A patent shall be presumed valid. 35 U.S.C. § 282(a).

    1. 4.1

      Ron, consider that only 26% of patents IPRed are sustained. Consider further, that standing is not required to bring an IPR so that people can challenge patents prior to any notice of infringement.

      Does this affect your analysis?

      1. 4.1.1

        How should it?

        Does this somehow change:

        A patent shall be presumed valid. 35 U.S.C. § 282(a).

      2. 4.1.2

        Ned, it would only affect the analysis if every single patent had already been IPRed and that 26% validity statistic actually held (which it clearly wouldn’t). The comments from the Court, and your own comments, illustrate a classic case of innumeracy stemming from selection bias. It’s like the statement “50% of all marriages end in divorce” — that statistic may be true, but it does not imply that 50% of *people* will get divorced. The distribution matters – a large percentage of people who get married (I don’t have the stats handy) stay married for life, and some other percentage get married, divorced, remarried, re-divorced, many multiple times. The distribution of divorces across the population is nowhere close to uniform; many people have zero divorces (like me) and a few people have many divorces (like Zsa Zsa Gabor or Elizabeth Taylor, 7 each).

        Similarly, of the patents that are asserted, only a small percentage make it to trial, and of those, not all are challenged on validity. As a thought experiment, suppose I set out to infringe every single unexpired patent, I convinced the owners of those patents to sue me, I challenged the validity of each patent, and magically the courts had time to hear andn rule on all those cases. Do you believe that the courts would find only 50% of them to be valid? Or 26%? I’d guess the actual number would be much more than 90%, even after all the recent CAFC and SCOTUS rulings related to patentability.

        Misunderstandings like these are often the bases for wonderful bar bets. Like “Do you have a fair coin? Heads/tails is 50/50, right? Want to bet $5 that it comes up 2 heads and 2 tails when you flip it 4 times? I’ll bet it won’t.” If you take that bet, I have a strong edge over you. Can you calculate it?

        I’m not particularly concerned if innumeracy leads a stranger at a bar to make a bad bet, but I’m gravely concerned that innumeracy could lead the Supreme Court to make bad case law.

      3. 4.1.3

        My take.

        It appears the validity rate in the PTO is roughly half that in court.

        Assume one could measure the validity rate of patents that are infringed by third parties and where the patent owner knows of the infringement and is deciding what to do. (This will exclude claims in a patent that are not infringed, but still might be valid, claims in patents not infringed or licensed, etc.)

        What is the validity rate of these patents?

        Of those actually asserted, 60% in court, 26% in the PTO are found not invalid.

        But, the choice to assert imposes a self-imposed filter, where the only patents that are asserted are those more likely valid than invalid. The 60% rate confirms that the selection process is there and working.

        But, so, one can think, reasonably, that the rate of real validity is lower. Remember, these are patents that are infringed where the claims are probably fairly broad.

        Assume the 60 vs. 24 percent court/PTO is roughly 2/1. Does the lower validity rate in the PTO have anything to do with the lack of standing so that the patent that are IPRed are not asserted? I doubt it. They are asserted patents. So the new validity rate is not 60%, but 30% among the asserted patents, and lower, probably a lot lower, among infringed patents taken as a whole.

        As IPRs become the new standard, the patent system is fundamentally changed. The bar has dramatically been lowered on validity, and people will soon understand this.

        And to think we created the Federal Circuit at one time to stop patents going to circuits with lower validity rates. What were we thinking when we created the IPR where BRI controls claim construction and panelists decide the entire case on “reasonably likelihood” standard because they are the same people writing the FWD who also instituted.

    2. 4.2

      “The near 50% validity outcome is only for adjudicated cases—the minority of disputes that are not settled. These are disputes at the margin…”

      Indeed, I’m actually quite shocked that they didn’t realize this is how many areas of law work – it’s not even unique to patent law.

      1. 4.2.1

        Having not read anything about this case except the comments on this board, I am blown away that no such discussion was undertaken at court.

        If true, the failure is not only judicial, but also one of profoundly incompetent lawyering.

    3. 4.3

      But maybe the parties may have the same perception that a challenge on the patent would likely succeed, so that the total probability of finding a patent INVALID is therefore much higher than 50%. That’s my experience.

      We cannot know without a lot more information. But Kagan’s 50/50 rule is certainly unfounded without considering the validity or invalidity of all the patents that don’t reach the Federal Circuit. Cases that reach the Supreme Court constitute a “self-selecting” data set that does not provide evidence of the data outside the set.

      You would expect the genius intellects at the Supreme Court to understand this, but you would have a 50/50 chance of being wrong.

      1. 4.3.1

        KDC: “But maybe the parties may have the same perception that a challenge on the patent would likely succeed”.

        That is a counterfactual – patent owners seldom assert patents that they themselves believe to be invalid. Your probability conclusions are in error.


          “That is a counterfactual – patent owners seldom assert patents that they themselves believe to be invalid. ”

          To be a fly on the wall of a strat session ahead of the decision to assert would be nice.

          I think with patents as with other types of legal claims, cases known to be quite weak are still asserted more than “seldom”.


          I only said maybe: We can’t know the probabilities without more information. I was agreeing with you, and pointing out another cause for uncertainty.

          Your suggestion that patent owners seldom assert patents they themselves believe to be invalid should hold at the start, but we know it does not hold universally. It does not necessarily hold after the defendant communicates a theory of invalidity, at which point both parties “may have the same perception that a challenge on the patent would likely succeed.” This may happen in licensing discussions, pre-litigation discussions, discovery, settlement negotiations, or motions.

          Though I have seen it happen, that plaintiff’s counsel wither while reading a draft reexam, or a ten year old user manual, I don’t know of any way to get enough data to develop a hunch as to which is predominant. That’s a job for professors.

  15. 3

    Gotta love false premises:

    This ditty from Kagan:

    “And there are two ways to construe a statute ­­ construe a patent; one is narrow and one is broad.  And if the patent is construed narrowly, I won’t be infringing it.  But if the patent is construed broadly, it’s not valid.”

    Tell me friends, when is the last time you wrote a noninfringement opinion where validity was at all material in your construction analysis? 

    1. 3.1

      Some years ago I wrote one on a patent that I determined failed to particularly point out and distinctly claim the invention. Because it was unsolvably indefinite, construction itself failed, hence invalidity, hence noninfringement.

    2. 3.2

      Ned: In any non-infringement opinion, you conclude there is no literal infringement. You are then compelled to address the issue of equivalents. When you address the issue of equivalents, you at least have to think about Wilson Sporting Goods, and maybe you have to use it to establish a limit to the scope of equivalents. So validity is material in every construction analysis.


          We should point out that the DOE is not really part of “construction” unless we are dealing with 112(f).

          So can it be said that in the ordinary case that a patent cannot be “construed” to read on the prior art? I think Philips said that that cannon of construction was iffy at best.


                Sorry Ned, I meant a real citation and not a case name thrown out there with your usual “version” (lack of) veracity.

                Please try again.

                (For example, from Adelman, Rader, Thomas: This court has on several occasions explicated the distinctions between the terms “equivalents” found in section 112 paragraph 6 and the doctrine of equivalents. See, e.g., Valmont Indus., Inc. v. Reinke Mfg. Co. 983 F.2d 1039, 1042-44; Chiuminatta 145 F.3d at 1310; Dawn Equip. 140 F.3d 1009, 1018-23 (citations abbrev.) Indeed, the Supreme Court recently acknowledged distinctions between equivalents as used in section 112 paragraph 6 and the doctrine of equivalents. See Warner-Jenkin 520 US 17, 27.

                You are welcome.

                1. MPF equivalents, is the same as DOE but for the fact that one is comparing the claim, in the latter, and the structure in the former.

                  The prior art does not come into play in claim construction but for 112(f).

                2. Except NOT, Ned – see the citations above (and contrast with your lack thereof).

                  You are (still) welcome.


          There can be no infringement if the asserted scope of equivalency would encompass the prior art. Wilson Sporting Goods Co. v. David Geoffrey & Assoc., 904 F.2d 677, 683 (Fed. Cir. 1990).
          Theoretically, you can say that DOE is not claim construction, and is a mental task that you do after construing the claims. Or you could say that DOE is part and parcel of claim construction. You get to the same place whether you say “your claim means xyz and some equivalent structure” or you say “your claim means only xyz, and not some equivalent structure, but that equivalent structure infringes under the DOE.”
          Perhaps Wilson Sporting Goods is worded as it is, with its hypothetical claim exercise, because it is trying to respect the first theoretical framework. You could view the hypothetical claim as a test claim construction which, if invalid, is impermissible.
          In either case, the range of equivalents is limited by the prior art.

    3. 3.3


      This is quite common actually.

      Many issues of invalidity stem from how the claims are construed: broadly, it may be invalid. Narrowly, it may be not infringed. Maybe you can’t construe the claims at all because they are unintelligible or because they require some subjective component? Maybe they should be means+function and thus cover only the structures in the specification (only to later find out that the Federal Circuit disagrees with you because of a “strong presumption” you thought you could overcome).

      The point is, it’s not possible to separate invalidity and infringement because they are both tied to claim construction (something no party has a burden on, I will add). Why does the alleged inducer get penalized because the patent owner did not clearly point out what they were claiming so that I could make a legitimate decision about invalidity and non-infringement? (this point seems particularly relevant given Jason’s scholarship tending to show that the Federal Circuit has maintained its loose indefiniteness standard).

      Having claims be “reasonably certain” matters for more than just infringement.

      1. 3.3.1

        Jane, Philips said that that rule of construction was iffy.

        We have this debate here between MM and I. If a claim not limited to specifics in the spec is invalid, should one limited the claim to save it or should one invalidate it?

        What did Philips say?

        What do you say.

        What did Halliburton say?


          As a normative matter, I don’t think we should be creating presumptions in the law (that aren’t in the statute) in order to save validity. Cf. Nautilus, n.10.


            Well, IMHO, Halliburton is not overruled. It is the apparent breadth of the claims that is the problem.

            They are invalid, IMHO.

            As a corollary, the validity of the claims should not be taken into account in construction.

            If, after construction, the claims read on the prior art, they are invalid under 102/103.

            If they are not enabled or lack written description for their full scope, 112(a).

            If they are definite — 112(b).

            So, I truly believe Kagan’s question is a false premise. It assumes a rule of construction to save the claim.


              I think we agree then. I don’t think validity should be considered at all when construing the claims (obviously a certain construction may lead to an invalidity conclusion, but we shouldn’t change the construction because of the result it would cause).

              But I think where we disagree is in interpreting what Kagan was referring to.

              I think Kagan was just noting that sometimes someone is given two possibilities, and sometimes it leads to one result and sometimes it leads to another result, but it’s unknown which possibility will be accepted.

              I don’t think Kagan was assuming a construction to save the claim. It sounds like she was contrasting patent construction with other areas of law where they do do that.

              But sometimes it can be difficult to tell from a transcript. It’s amazing how much people misspeak but when there, everyone knows what was intended (and this is hard, if not impossible, to capture with a transcript)


                anon, we really have to come up with a name for you. We have global warming denier. Holocaust denier. Evolution denier.

                What fits you best?

                What kind of denier are you?

                1. The denier of the veracity of the made-up fallacy-ridden Ned-IMHO law.

                  In other words, the champion of truth and actual facts and real law.

                  A little wordy, but it grows on you 😉

                2. There he stands, folks, a caped figure with the symbol A emblazoned.

                  He stand for truth, fact and the real American way. He is a man from Missouri.

                  On your knees poor citizens. Look up with awe and respect. Rise, pump your chest once, and fling up your arm in salute like a Roman soldier saluting Caesar. All hail

                  Anon the Great!

  16. 2

    I had one General Counsel who told me that in his view a patent was not valid until it had been tested in court.

    1. 2.1

      I had one Supreme Court Justice muse: “The only valid patent is one that has not yet appeared before us.

      If we do not learn, surely shall we repeat.

      Let us not settle merely for peace for our time.

      1. 2.1.1

        “I had one Supreme Court Justice…

        Daddy! I want a Supreme Court Justice of my very own. Don’t care how – I want it Noooowwww!

      1. 1.1.1

        Then the high invalidity rate at the PTO indicates that the patents are “garbage” as one board member was quoted as saying to 6?



          Either the PTO has been doing a very poor job or the PTAB is being unfair.

          In both cases, we are left with the PTO.


            “Either the PTO has been doing a very poor job”

            Not necessarily. Just because there is a high invalidity rate in cases challenged, after people have more time to find art/expert testimony doesn’t indicate that at all.


          “Then the high invalidity rate at the PTO indicates that the patents are “garbage” as one board member was quoted as saying to 6?”

          Nah it isn’t the high invalidity rate that indicates such to him Ned, it’s the subject matter and art, aka the merits, of those cases that indicate they’re garbage.

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