Docket Nos. 2012-1042
PROST, NEWMAN, O’MALLEY
December 28, 2015
Brief Summary: DC decision of infringement reversed because one of the claimed steps is not performed by either Cisco or its customers.
Summary: A 2013 FC decision reversed the DC finding that Cisco was liable for direct and induced infringement of Commil’s patent relating to short-range wireless networks because the DC refused to admit Cisco’s evidence a good-faith belief the patent was invalid. The 2013 decision did not reach the issue of infringement. Commil appealed the FC decision to SCOTUS which held that “[t]he scienter element for induced infringement concerns infringement” which “is a different issue than validity” (“this new defense” would be contrary to the presumption of patent validity and “a defendant could prevail if he proved he reasonably believed the patent was invalid”, thereby “circumvent[ing]…the clear and convincing standard” (135 S.Ct. 1920 (2015)), and remanded the case to the FC. In this opinion, the FC considers the infringement issues not considered previously. Cisco argued “Commil cannot prevail because neither Cisco nor its customers directly infringe by performing both method steps.” Sole independent claim 1 includes a “dividing” step and a “running” step. After considering the jury findings and expert testimony, the FC panel concluded that the running step is not performed by either Cisco or its customers (“this conclusion precludes liability under either of Commil’s direct or inducement theories”). Thus, the DC decision was reversed.