By Rachel Sachs
On Tuesday, the Supreme Court issued its opinion in Commil USA, LLC v. Cisco Systems, Inc., in which it held that a defendant’s belief that a patent is invalid is not a defense to induced infringement of that patent under 35 U.S.C. § 271(b). Four years ago, in a case called Global-Tech, the Court had held that a defendant could not be liable for induced infringement unless it had knowledge not only of the patent’s existence but also that its behavior constituted patent infringement. In Commil, six Justices clarified that a defendant who has knowledge of a patent’s existence but believes it to be invalid may still be held liable for inducing its infringement. (Justice Scalia dissented and was joined by Chief Justice Roberts, with Justice Breyer recused.)
Commil raises several issues for discussion, but I want to talk about just one here: the majority’s fixation on the distinction between infringement and validity. The key passages of Justice Kennedy’s opinion, on pages 9 through 11, seem to rest heavily on preserving the separation between these two issues. Essentially, as Justice Kennedy puts it, “because infringement and validity are separate issues under the Act, belief regarding validity cannot negate the scienter required under §271(b).” Justice Kennedy is clearly correct as a formal matter. We ask different legal questions when adjudicating issues of infringement and validity, we apply different burdens of proof to the two questions, and we involve different parties in their resolution.
But Justice Kennedy’s opinion ignores the close practical relationship between the two issues. By contrast, scholars and practitioners have long recognized the tension between infringement and validity as instantiated in patent litigation. A patentee wants its patent to be construed broadly, to ensure that the defendant’s invention falls within its bounds. Yet at the same time, the patentee must avoid claiming too broadly, or its patent may be invalidated on precisely those grounds. (Defendants typically advocate the opposite positions.)
This is not an imagined hypothetical. A case decided just a few weeks ago by the Federal Circuit, AstraZeneca LP v. Breath Ltd., provides a helpful example. AstraZeneca had sued generic drug manufacturers who had filed Abbreviated New Drug Applications seeking to market generic versions of AstraZeneca’s Pulmicort Respules, used to treat asthma in children. The district court had originally construed AstraZeneca’s patent claims narrowly, after which a jury found that the claims were not infringed by the defendants. In October 2013, the Federal Circuit reversed the district court’s claim construction in favor of AstraZeneca’s broader preferred interpretation. But on remand, the district court held the relevant claims obvious (and thus invalid) in light of AstraZeneca’s new, broader patent scope. The Federal Circuit has now affirmed the district court’s obviousness determination.
To be sure, an appreciation of the practical relationship between infringement and validity is not obviously dispositive of Commil. But to the extent that defendants must “know” their conduct infringes a particular patent, they ought to know something about the patentee’s own interpretation of their patent’s breadth – and that, in turn, tells them something about the likelihood of its validity.