Commil USA, LLC, Petitioner v. Cisco Systems, Inc.

This is Justice Scalia's dissent. Justice Kennedy wrote the majority opinion.

Justice Scalia and Chief Justice Roberts believe that a good faith belief that a patent was invalid should constitute a defense to a claim of induced infringement.

Commil USA, LLC, Petitioner
Cisco Systems, Inc.

No. 13-896.

Supreme Court of the United States.

Decided May 26, 2015.

JUSTICE SCALIA, with whom THE CHIEF JUSTICE joins, dissenting.

I agree with the Court's rejection of the main argument advanced by Commil and the United States, that induced infringement under 35 U. S. C. §271(b) does not "requir[e] knowledge of the infringing nature of the induced acts." Brief for United States as Amicus Curiae 9; see also Brief for Petitioner 15-44. I disagree, however, with the Court's holding that good-faith belief in a patent's invalidity is not a defense to induced infringement.

Infringing a patent means invading a patentee's exclusive right to practice his claimed invention. Crown Die & Tool Co. v. Nye Tool & Machine Works, 261 U. S. 24, 40 (1923) (quoting 3 W. Robinson, Law of Patents §937, pp. 122-123 (1890)). Only valid patents confer this right to exclusivity—invalid patents do not. FTC v. Actavis, Inc., 570 U. S. ___, ___ (2013) (slip op., at 8). It follows, as night the day, that only valid patents can be infringed. To talk of infringing an invalid patent is to talk nonsense.

Induced infringement, we have said, "requires knowledge that the induced acts constitute patent infringement." Global-TechGlobal-Tech Appliances, Inc. v. SEB S. A., 563 U. S. ___, ___ (2011) (slip op., at 10). Because only valid patents can be infringed, anyone with a good-faith belief in a patent's invalidity necessarily believes the patent cannot be infringed. And it is impossible for anyone who believes that a patent cannot be infringed to induce actions that he knows will infringe it. A good-faith belief that a patent is invalid is therefore a defense to induced infringement of that patent.

The Court makes four arguments in support of the contrary position. None seems to me persuasive. First, it notes that the Patent Act treats infringement and validity as distinct issues. Ante, at 9-10. That is true. It is also irrelevant. Saying that infringement cannot exist without a valid patent does not "conflate the issues of infringement and validity," ante, at 10, any more than saying that water cannot exist without oxygen "conflates" water and oxygen. Recognizing that infringement requires validity is entirely consistent with the "long-accepted truth . . . that infringement and invalidity are separate matters under patent law." Ibid.

The Court next insists that permitting the defense at issue would undermine the statutory presumption of validity. Ante, at 10-11. It would do no such thing. By reason of the statutory presumption of validity, §282(a), patents can be held invalid only by "clear and convincing evidence." Microsoft Corp. v. i4i Ltd. Partnership, 564 U. S. ___, ___ (2011) (slip op., at 1). This presumption is not weakened by treating a good-faith belief in invalidity as a defense to induced infringement. An alleged inducer who succeeds in this defense does not thereby call a patent's validity into question. He merely avoids liability for a third party's infringement of a valid patent, in no way undermining that patent's presumed validity.

Next, the Court says that "invalidity is not a defense to infringement, it is a defense to liability." Ante, at 11. That is an assertion, not an argument. Again, to infringe a patent is to invade the patentee's right of exclusivity. An invalid patent confers no such right. How is it possible to interfere with rights that do not exist? The Court has no answer.

That brings me to the Court's weakest argument: that there are "practical reasons not to create a defense based on a good-faith belief in invalidity." Ante, at 12 (emphasis added); see also ibid. ("Creating a defense of belief in invalidity, furthermore, would have negative consequences" (emphasis added)). Ours is not a common-law court. Erie R. Co. v. Tompkins, 304 U. S. 64, 78 (1938). We do not, or at least should not, create defenses to statutory liability—and that is not what this dissent purports to do. Our task is to interpret the Patent Act, and to decide whether it makes a good-faith belief in a patent's invalidity a defense to induced infringement. Since, as we said in Global-Tech, supra, the Act makes knowledge of infringement a requirement for induced-infringement liability; and since there can be no infringement (and hence no knowledge of infringement) of an invalid patent; goodfaith belief in invalidity is a defense. I may add, however, that if the desirability of the rule we adopt were a proper consideration, it is by no means clear that the Court's holding, which increases the in terrorem power of patent trolls, is preferable. The Court seemingly acknowledges that consequence in Part III of its opinion.

For the foregoing reasons, I respectfully dissent.