Has the Supreme Court signaled the end of invalidity opinion letters?

by Thompson Coburn LLP

On May 26, 2015, in the case of Commil USA, LLC v. CISCO Systems, Inc., the U.S. Supreme Court answered the question of whether a good-faith belief that a patent is invalid shields a party from committing induced infringement. Finding the determinations of infringement separate and apart from determinations of invalidity, the Supreme Court held that induced infringement could not be avoided simply by believing the patent in question invalid — a seemingly simple answer to a simple question.

But in reaching that determination, did the Supreme Court signal a desire to do more? In its Commil decision, the justices seemed to suggest that a belief as to the invalidity of a patent — no matter how well reasoned or firmly grounded — may also not prevent a finding that direct infringement was willful. While patent law has long recognized that a potential infringer who obtains an opinion of counsel addressed to either noninfringement or invalidity may prevent a finding of willfulness, arguments in the Commil decision may call in to question the efficacy of opinions relying on only invalidity arguments. If so, such a holding would mark a dramatic shift in patent jurisprudence and practice and may leave many clients holding invalidity opinion letters that unknowingly expose them to liability.

The Commil decision
The patent holder plaintiff in Commil, Commil USA, LLC, sued defendant CISCO Systems, Inc. for infringing patents Commil held directed to wireless networks. Commil argued that CISCO both directly infringed its patents by selling the wireless technology at issue and induced infringement by selling others the equipment at issue for them to use to infringe the patent.

At trial, CISCO argued it could not have induced infringement of Commil’s patent as CISCO had a good-faith belief that Commil’s patent was invalid. CISCO tried to introduce evidence on the invalidity of Commil’s patent, but the trial court excluded the evidence as inadmissible — presumably because it was irrelevant. CISCO was found liable for both direct and indirect infringement and damages of $63.7 million.

CISCO appealed to the Court of Appeals of the Federal Circuit, which concluded it was error for the trial court to have excluded its evidence that it had a good-faith belief that Commil’s patent was invalid. According to the Federal Circuit, because it is “axiomatic that one cannot infringe an invalid patent,” it also followed that “evidence of an accused inducer’s good-faith belief of invalidity may negate the requisite intent for induced infringement.” The Federal Circuit, in reaching its decision, found “no principled distinction between a good-faith belief of invalidity and a good-faith belief of non-infringement for the purpose of whether a defendant possessed the specific intent to induce infringement of a patent.”

This time Commil appealed and the Supreme Court disagreed with the Federal Circuit. In reaching its decision, the Supreme Court emphasized that “the scienter element for induced infringement concerns infringement” — an issue wholly separate from invalidity. According to the Supreme Court, because infringement and validity are separate issues, “belief regarding validity cannot negate the scienter required under §271(b).” Put succinctly, the defense of invalidity is a defense to liability, “not a defense to infringement.”

The Supreme Court then went on to devote much of the remainder of the opinion to showing how infringement and validity are two very separate issues. The Court described how declaratory judgment claims of invalidity exist separate and apart from claims of infringement (and can survive a finding that there is no infringement). It pointed to the topics of infringement and invalidity being parts of separate sections of the Patent Act and to the fact that each are listed as two separate defenses and that defendants may raise either or both of them.

But perhaps most importantly to the court, was the presumption of validity and its impact on this analysis. Because patents are presumed valid, the patent holder had no need to prove that its patent was valid in order to bring a claim for infringement. According to the Supreme Court, allowing a defendant to rely on a good-faith belief that a patent was invalid to avoid induced infringement required plaintiffs to prove the validity of their patents — in contravention of the presumption of validity.

Willfulness and Commil
In In re Seagate, 497 F.3d 1360 (Fed. Cir. 2007), the Federal Circuit established a two-prong test for determining whether there has been willful infringement. Prior to Seagate, written opinions of counsel arguing that there was no infringement or that the patent in question was invalid were seen as the only way for a party to avoid a finding of willful infringement. Seagate, however, removed this need for a formal written opinion and replaced it with a more flexible test looking to the intent of the accused infringer.

Under the first prong of that test, the patent owner was required to prove by clear and convincing evidence that the alleged infringer acted despite “an objectively high likelihood that its action constituted infringement of a valid patent.” The next prong then required the patent owner to show this objectively high risk was “either known or so obvious that it should have been known” to the alleged infringer. Thus, under Seagate’s first prong, accused infringers could avoid a finding of willful infringement two ways: (1) by showing defenses to infringement, or (2) arguments of invalidity.

While there was no need to make such a showing in a formal written opinion of counsel, nothing so memorialized the possession of such invalidity arguments at the time of infringement like an opinion of counsel addressing the topic. And so, the practice for those fearing claims of infringement and hoping to avoid a finding of willful infringement has been to seek formal written opinions of counsel that they either do not infringe or that the patent in question is invalid, or both.

But, the rationale of the Commil decision appears to call the first Seagate prong into question with respect to written opinions directed solely to invalidity arguments. One could argue that, under Seagate and Commil, to show willful infringement, the patent holder must show that the alleged infringer acted despite an objectively high likelihood that its actions constituted infringement and nothing more. Since every patent is presumed valid, the portion of the analysis directed to infringement of a valid patent can be assumed. Accordingly, one reading of Commil is that the only relevant inquiry with respect to a determination of willfulness is with respect to the alleged infringer’s infringement activities. Continuing under that reading, any inquiry into the validity of the patent, including whether the alleged infringer believed the patent to be invalid, could be seen as irrelevant, because infringement and validity are entirely separate determinations with no bearing on one another.

If this were the intended result of the Commil decision, the effects would be monumental in the patent world. Parties who paid for and relied upon opinions of counsel to avoid findings of willful infringement would find that they are exposed despite their efforts. Firms that had issued invalidity opinions of counsel would be forced to revisit those opinions to add arguments directed to non-infringement. And, for the parties, until such opinions could be rendered, there would have no protection for claims of willful infringement.

To be clear, neither the Supreme Court nor the Federal Circuit have held that believing a patent invalid is irrelevant to determining whether an infringer of that patent acted willfully. Nor has a court equated the scienter requirement of showing induced infringement with the knowing infringement of willful infringement. And at no point does the Supreme Court directly point to either requirement in its analysis. But the beginnings of an argument can be pulled from the Commil analysis. Given the potentially earth-shattering nature of the Supreme Court intending such a result, patent law practitioners could have much to do to protect their clients. But ultimately only further decisions will provide true clarity.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Thompson Coburn LLP | Attorney Advertising

Written by:

Thompson Coburn LLP

Thompson Coburn LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.