Tuesday, December 9, 2014

Commil v. Cisco and the Tort of Patent Infringement

Guest post by Saurabh Vishnubhakat, Postdoctoral Associate at Duke Law School. Vishnubhakat is also an expert legal advisor in the USPTO's Office of Chief Economist. His scholarship is available on SSRN, and you can follow him at @emptydoors. The arguments in this writing are the author’s and should not be imputed to the USPTO or to any other organization.

The Supreme Court has decided to hear Commil v. Cisco on whether good-faith belief of a patent’s invalidity is a defense to inducing its infringement.  This is a welcome step in patent law’s recent turn back toward tort doctrine.  Though infringement has always been a tort, modern infringement law has at times been undisciplined about its tort underpinnings.  A stark example of this indiscipline—and a source of much current doctrinal confusion—is the widely repeated view that direct infringement is a strict liability offense.  As I discuss in a new article, direct patent infringement is better understood as an intentional tort.  And even if one rejects the intentional tort view, patent law’s strict liability dogma is still under-determined by tort principles.  Commil is the Court’s third recent foray into this terrain.

The first was Global-Tech v. SEB (2011), when the Court held that induced infringement under 35 U.S.C. § 271(b) requires intent and knowledge not merely as to the induced actions, but also as to whether the induced actions constitute infringement.  The Court drew a basic tort law distinction between mental states regarding actions in the world and mental states regarding those actions’ implications in the law.  Induced infringement requires both, said the Court.

The tort conception of patent infringement became even more pronounced last Term in Limelight v. Akamai (2014), when the Court held that indirect infringement requires an underlying direct infringement.  Before the Court was divided infringement at arm’s length:  Limelight performed some steps, and other parties outside Limelight’s control performed the rest.  The en banc Federal Circuit found Limelight liable for inducement by finding that while no one was liable for an underlying direct infringement, the requisite underlying infringement had taken place, as all the steps had been performed.  The Court rejected this notion of joint tortfeasance, explaining that if the actions that supposedly constitute direct infringement are not enough to create liability, then what has taken place is not direct infringement.

The Federal Circuit’s confusion on these issues stems from its mistaken strict liability rhetoric about direct infringement.  In its view, what makes direct infringement a strict liability tort is two propositions:  (1) direct infringement does not require an intent to commit infringement (that is more the realm of willful infringement); and (2) direct infringement does not require any knowledge of the patent (that is more the realm of indirect infringement).  Both are true, but both are also true of intentional torts:  intent to commit the legal tort is unnecessary, and ignorance of the law is no excuse.  What sets intentional tort apart is the need for an intent to perform an action that the law deems tortious.

Take trespass.  If someone intentionally steps on a piece of land, it does not matter that she did not intend to commit trespass, or that she was unaware the land belongs to so-and-so.  She may even have had a good-faith belief of law that she had a right to be there.  Withal, she is liable for trespass because she intended to step on the land.  Indeed, this tortious intent to perform the action is what makes intentional torts intentional.  That is why, if she did not intend to step on the land—say, if she tripped and fell on the land—she would lack tortious intent, and there would be no trespass.

So the doctrinal question for direct infringement is, should liability require that the alleged infringer intended to make, intended to sell, or intended use the invention?  If yes (liability should require tortious intent), then direct infringement is an intentional tort in the ordinary tort sense that unintended actions cannot create liability.  If no, if unintended making or selling or using can create liability, then strict liability might be on the table.  Yet patent law does not say no.  Patent law does not really even ask the doctrinal question, and the strict liability view is mere ipse dixit.

That has started to change.  Global-Tech properly distinguished between intent as to actions and intent as to the actions’ legal implications—for induced infringement.  Limelight punted on that distinction as to direct infringement, though it did pose the issue helpfully through divided infringement.  Even if the actions of multiple parties when considered collectively would directly infringe a patent, why should their actions be considered collectively in the first place?

The intentional tort view of direct infringement offers an answer.  What would be needed is tortious intent, intent to perform the relevant making or selling or using.  So, if there existed a joint purpose among the parties to accomplish one of those actions, then and only then could their actions properly be evaluated collectively.  In fact, this is precisely what the control-or-direction theory, the principal-agent theory, etc. are all trying to resolve in divided infringement.  But imposing too narrow a definition of joint purpose lets some “real” divided infringers evade liability.  Disregarding joint purpose altogether unfairly sweeps in independent actors who were each practicing fewer-than-all the steps of the patent—unfairly because there is no principled reason to evaluate their conduct collectively.

The question presented in Commil is another step in patent infringement’s tort progression:  “Does an inducer’s good-faith belief that a patent is invalid negate inducement liability?”  The issue in Global-Tech was whether an inducer’s good-faith belief that a patent is uninfringed negates inducement liability, and the Court said yes.  Intent and knowledge about the induced actions are necessary, and so are intent and knowledge about a legal implication of the actions:  that they constitute infringement.

Now in Commil, the Court must again distinguish between a mental state about induced actions and a mental state about a legal implication of those actions.  This time, the implication is whether the legal right involved is valid.  At the Federal Circuit, Judge Prost’s majority opinion held that infringement requires validity (“one cannot infringe an invalid patent”), and so an inducer’s belief about invalidity can negate the inducer’s requisite belief about infringement.  Judge Newman’s dissent observed that infringement does not require any particular belief about validity.

Judge Prost appears to have the better argument.  To put Judge Newman’s point another way, you don’t need to believe that a patent is valid in order to infringe it, any more than you need to believe someone else owns a piece of land in order to trespass on it.  That is true, but Judge Prost’s point and the inducement standard are not solely about the fact of infringement.  They are about the inducer’s belief regarding infringement.  After Global-Tech, it is not just necessary that the induced actions constituted infringement, but also that the inducer knew the actions constituted infringement.  And to believe there is infringement, it would seem that you do also need to believe there is a valid right to be infringed.  (Notably, these last two points are in dispute.  The Solicitor General’s brief supporting certiorari argues that Global-Tech was supplying mere dicta when it stated that induced infringement requires knowledge that the induced acts constitute infringement.  The SG also argues, as Judge Newman did, that even an invalid patent can be infringed, though liability may not follow.)

The focus in Commil on inducement means that the case may not address the more fundamentally mistaken strict liability view of direct infringement.  Still, the Court has a valuable opportunity to affirm the distinction, long overlooked in infringement, between mental states regarding actions and mental states regarding the legal implications of those actions.  Taking this opportunity would help to continue grounding patent infringement doctrine back in tort law.

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