Commil United States, LLC v. Cisco Sys., Inc.

10 Analyses of this case by attorneys

  1. Supreme Court Denies Petition Arguing for Preclusive Effects of PTAB Decisions Pending Appeal

    Jones DayMarch 4, 2024

    teral estoppel effect until that decision is affirmed or parties waive their appeal rights.” Writ at 9. The district court also held all claims of the ’793 patent were not invalid and that Liquidia induced infringement of the ’793 patent. Writ at 9.The Federal Circuit affirmed the district court’s findings and explained that the claims are not cancelled until after that court affirms the PTAB decision or the parties waive their appeal rights—confirming that a PTAB decision pending appeal is non-final and non-preclusive. Writ at 28. Liquidia filed the writ of certiorari on January 23, 2024. Writ at 1.Liquidia’s legal argument in the petition was two-fold: (1) the Federal Circuit’s decision disregarded Supreme Court precedent regarding PTAB decisions; and (2) the Federal Circuit’s decision conflicted with ordinary preclusion principles applied to agency decisions by the Supreme Court and all other circuits. Writ at 10-11. Liquidia mainly relied on Commil USA, LLC v. Cisco Systems, Inc., 575 U.S. 632 (2015) and B & B Hardware Inc. v. Hargis Industries, Inc., 575 U.S. 138 (2015). Writ 13-14.Liquidia asserted Commil explained accused inducers have many avenues to obtain an invalidity ruling to shield themselves from infringement liability, including petitioning for an IPR and “receiv[ing] a decision as to validity within 12 to 18 months.” Writ at 13. According to Liquidia, an IPR decision made in 12-18 months, like the one Liquidia received, should on its own shield alleged inducers from liability in parallel litigation under Commil—regardless whether the decision is pending appeal. Writ at 13-14.In B & BHardware, the Court held that a TTAB decision regarding likelihood of confusion was preclusive in later district court trademark infringement litigation. Writ at 14. In doing so, the Court explained that issue preclusion “often applies” when an issue is in front of a court and an administrative agency. Writ at 14. Liquidia argued that B & B Hardware reinforced their reading of Commil and t

  2. United Therapeutics Corp. v. Liquidia Technologies, Inc. (Fed. Cir. 2023)

    McDonnell Boehnen Hulbert & Berghoff LLPJuly 28, 2023

    r:Disease-specific treatment requirements are matters for the FDA and medical practitioners. They are best suited to make these determinations because practitioners are informed by the findings of the regulatory agency to avoid treatment of patients who will not properly respond. And every claim to a method of treatment of an ailment has refinements. That is, for any given method of treatment claim, there may be a subset of patients who would not benefit from or should not take the claimed treatment. That does not mean that such claims are not sufficiently enabled or supported by written description. A subset of unresponsive patients is not analogous to unsupported species in a generic claim to chemical compounds.On the question of inducement to infringe, the panel summarily rejected Liquidia's reliance on the PTAB's decision in a parallel IPR, that all claims of the '793 patent are invalid, because that decision is not yet final, distinguishing Commil USA, LLC v. Cisco Systems, Inc., 575 U.S. 632, 644 (2015). (This seems a sound application of judicial economy principles, because should the Federal Circuit affirm that PTAB determination Liquidia has a remedy in asking the district court to lift the stay on FDA approval of its commercial product.) On the merits, the panel agreed with UTC that all Liquidia's eventual label needs to provide is instructions to administer a therapeutically effective amount of treprostinil in a single event dose as required by the asserted '793 patent claims.Turning to the '066 patent, the Federal Circuit deigned not to consider the parties' arguments regarding infringement based on the district court's determination that the asserted claims were invalid for anticipation by the Moriarty reference. UTC argued that the District Court erred in this determination, because the evidence was insufficient that Moriarty's pharmaceutical product contained the pattern of impurities in UTC's treprostinil formulation due to alkylation and hydrolysis steps in its preparation

  3. Client Alert: Federal Circuit Court Affirms Inducement of Patent Claims Found Invalid by PTAB

    Neal, Gerber & Eisenberg LLPJuly 28, 2023

    While direct patent infringement is a strict liability offense, liability for inducing another’s infringement requires an element of intent. Specifically, the party accused of inducement must have known of the patent and that the actions it encouraged would result in infringement. An allegation of infringement by inducement typically relates to situations where the method claims of a patent are practiced by the purchaser of a product rather than the defendant who offers the product. It is well-settled that a good faith belief in the actions being encouraged will not infringe the known patent is a defense to inducement. It is equally well settled that a belief the known patent is invalid is not a defense to inducement. SeeCommil USA, LLC v. Cisco Sys., Inc., 575 U.S. 632, 642-645 (2015).The Federal Circuit Court of Appeals recently issued a precedential opinion reaffirming the position rule set forth in Commil, and expanding it in a way worthy of taking notice. In a case captioned United Therapeutics Corp. v. Liquidia Techs., Inc., the appellate court affirmed a finding of inducement, even though the patent claims were found to be invalid by the administrative Patent Trial and Appeals Board (PTAB). The defendant had not just relied on a belief of invalidity, but rather on a ruling of invalidity. At the trial court level, the defendant had offered the PTAB ruling as a defense to inducement, arguing that one cannot infringe an invalid patent, thus, the requisite intent was lacking. The trial court disagreed and the defendant appealed, arguing clear error.But no error was found. Instead, the appellate court noted that a PTAB “decision does not have collateral estoppel effect until that decision is affirmed or the parties waive their appeal rights.” It further held that

  4. 2015 IP Law Year In Review

    Knobbe Martens Olson & Bear LLPJohn SgangaFebruary 2, 2016

    Commil USA, LLC v. Cisco Systems, Inc., 135 S. Ct. 1920 (May 26, 2015) - ..Does a defendant’s belief that a patent is invalid serve as a defense to charges of inducing infringement? NO - ..Inducement requires proof that the accused:– (1) knows of the patent-in-suit, and – (2) knows that the actions induced constitute patent infringement - ..Scienter element for induced infringement concerns infringement only, not validity - ..Defense would undermine presumption of validity - ..Frivolous patent assertions can still be addressed with Rule 11 sanctions or fee awards under Section 285…Please see full Presentation below for more information.

  5. ANDA Update - July 2015

    McDermott Will & EmeryMelissa Nott DavisJuly 31, 2015

    On May 26, 2015, the Supreme Court of the United States held that “a defendant’s belief regarding patent validity is not a defense to an induced infringement claim”—it is only a defense to liability. Commil USA, LLC v. Cisco Systems, Inc., Case No. 13-896, 575 U.S. ___ (S.Ct. May 26, 2015). The Court reached this holding in a long-running patent infringement dispute relating to “method[s] of implementing short-range wireless networks.”

  6. Induced Infringement Intent Requirement Not Countered by a Good-Faith Belief of Patent Invalidity

    Finnegan, Henderson, Farabow, Garrett & Dunner, LLPJeffrey D. SmythJune 11, 2015

    Author:Jeffrey D. SmythEditor:Kathleen A. DaleyOn May 26, 2015, the Supreme Court reversed the Federal Circuit in Commil USA, LLC v. Cisco Systems, Inc., No. 13-896 (May 26, 2015), and held that a defendant’s belief regarding the validity of a patent is not a defense to induced infringement. Justice Kennedy authored the opinion of the 6-2 majority.

  7. Just Because You Think It’s Invalid Doesn’t Mean You Don’t Infringe!

    Weintraub Tobin Chediak Coleman Grodin Law CorporationAudrey MillemannJune 10, 2015

    That means a patent owner does not need to prove the patent is valid in a suit for infringement. And, as the U.S. Supreme Court just explained in Commil United States, LLC v. Cisco Systems, Inc., 2015 U.S. LEXIS 3406 (May 26, 2015), a defendant’s belief that the patent is invalid is not a defense to infringement. Commil owned a patent that covered a method for increasing the speed of wireless networks.

  8. Good Faith Belief in Invalidity No Defense to Active Inducement

    McDermott Will & EmeryPaul DevinskyMay 30, 2015

    The Court held that a good-faith belief of invalidity of a U.S. patent is not a defense to a charge of inducing infringement. Commil USA, LLC v. Cisco Systems, Inc., Case No. 13-896, (May 26, 2015); 575 U.S. ___ (2015) (Scalia, J., dissenting, joined by Roberts, C.J.) (Breyer, J., took no part in the case). In reversing the Federal Circuit on the issue presented, the Supreme Court held that Cisco’s good-faith belief that the Commil patent at issue was invalid is not a defense to Commil’s claim that by selling products for its customers’ use, Cisco induced infringement.

  9. Belief of Invalidity Is Not a Defense to Induced Infringement

    Crowell & Moring LLPKathryn L. CluneMay 27, 2015

    May.27.2015Yesterday, the Supreme Court decisively struck down the "good-faith belief of invalidity" defense for induced patent infringement cases in Commil USA, LLC v. Cisco Sys., Inc., No. 13-896, U.S. (May 26, 2015). While the Court acknowledged that the validity of a patent is a predicate to its enforceability, it rejected the notion that a mere good-faith belief of invalidity could shield against liability for induced infringement.

  10. US Supreme Court Eliminates "Good-Faith Belief of Invalidity" Defense for Induced Patent Infringement

    Katten Muchin Rosenman LLPMichael DorfmanMay 27, 2015

    On May 26, 2015, the US Supreme Court handed down an important decision regarding induced infringement under 35 U.S.C. §271(b). Commil USA, LLC v. Cisco Systems, Inc., __ U.S. __ (May 26, 2015). Unlike direct infringement under §271(a), induced infringement under §271(b) requires the defendant to have a certain mental state—the accused infringer must (1) know of the patent and (2) know that "the accused acts constitute patent infringement."