Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

Expanding Defenses To Inducing Infringement

By Brian Mudge and Ksenia Takhistova
November 30, 2013

On Oct. 25, 2013, the Federal Circuit, by a vote of six-to-five, denied rehearing en banc in Commil USA, LLC v. Cisco Sys., Inc., No. 2012-1042 (Oct. 25, 2013) (Commil II). That decision left intact the panel's holding, in a case of first impression, that an alleged indirect infringer's “good-faith belief of invalidity may negate the requisite intent for induced infringement.” Commil USA, LLC v. Cisco Sys., Inc., 720 F.3d 1361 (Fed. Cir. 2013) (Commil I). According to one dissenting opinion from the rehearing denial, the panel's majority opinion “created a new noninfringement defense to induced infringement,” premised on the accused infringer's subjective belief of patent invalidity. Commil II, slip op. at 2 (Reyna, J., dissenting).

Commil had filed suit in the Eastern District of Texas, accusing Cisco of infringing a patent directed to a method of providing improved communication for mobile devices moving between base stations. Commil alleged that Cisco directly infringed certain method claims and induced infringement of those claims by others. During the first jury trial, Cisco was found liable for direct infringement but not induced infringement, and Commil was awarded $3.7M in damages. Commil I, at 1365.

The district court granted Commil a partial new trial on the issues of indirect infringement and damages. Id. Before the start of the second trial, the district court ruled that Cisco could not present evidence of its good-faith belief of patent invalidity to rebut the allegation of induced infringement. Id., at 1367. During the second trial, the district court instructed the jury that it could find Cisco liable for induced infringement if it “actually intended to cause the acts that constitute direct infringement and that Cisco knew or should have known that its actions would induce actual infringement.” Id., at 1366. The jury returned a verdict in favor of Commil on induced infringement, and awarded $63.7 M in damages. Id., at 1365.

This premium content is locked for Entertainment Law & Finance subscribers only

  • Stay current on the latest information, rulings, regulations, and trends
  • Includes practical, must-have information on copyrights, royalties, AI, and more
  • Tap into expert guidance from top entertainment lawyers and experts

For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473

Read These Next
Major Differences In UK, U.S. Copyright Laws Image

This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.

The Article 8 Opt In Image

The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.

Strategy vs. Tactics: Two Sides of a Difficult Coin Image

With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.

Legal Possession: What Does It Mean? Image

Possession of real property is a matter of physical fact. Having the right or legal entitlement to possession is not "possession," possession is "the fact of having or holding property in one's power." That power means having physical dominion and control over the property.

The Stranger to the Deed Rule Image

In 1987, a unanimous Court of Appeals reaffirmed the vitality of the "stranger to the deed" rule, which holds that if a grantor executes a deed to a grantee purporting to create an easement in a third party, the easement is invalid. Daniello v. Wagner, decided by the Second Department on November 29th, makes it clear that not all grantors (or their lawyers) have received the Court of Appeals' message, suggesting that the rule needs re-examination.