Even a good-faith belief of invalidity is not a defense to a claim of induced infringement. Here, for example, a major supplier of wireless access points and controllers was found to be subject to liability for providing infringement-inducing products to consumers even though it proffered evidence of its good-faith belief in the patent’s invalidity. “[B]ecause infringement and validity are separate issues under the [Patent] Act, belief regarding validity cannot negate the scienter required under §271(b).” It may therefore be best when counseling clients to suggest more proactive courses of action based on a good-faith belief of invalidity, including seeking ex parte reexamination, inter partes review, or a declaratory judgment.
Background / Facts: The patent being asserted here relates to providing faster and more reliable handoffs of mobile devices from one base station to another as a mobile device moves throughout a network area. The accused infringer is a major supplier of wireless access points and controllers that are accused of inducing infringement of the patent when deployed. Although the patent was found valid at trial, the accused infringer attempted to introduce evidence that it had a good-faith belief of invalidity in an attempt to show that it lacked the requisite “knowledge that the induced acts constitute patent infringement” under 35 U.S.C. § 271(b).
Issue(s): Whether a defendant’s belief regarding patent validity is a defense to a claim of induced infringement.
Holding(s): No. In reversing the Federal Circuit below, the Supreme Court distinguished between the act of infringement and the affirmative defense of invalidity. “The scienter element for induced infringement concerns infringement; that is a different issue than validity. Section 271(b) requires that the defendant ‘actively induce[d] infringement.’ That language requires intent to ‘bring about the desired result,’ which is infringement. [] And because infringement and validity are separate issues under the [Patent] Act, belief regarding validity cannot negate the scienter required under §271(b).” The Supreme Court countered the Federal Circuit’s observation that it is “axiomatic that one cannot infringe an invalid patent” by noting “the long-accepted truth—perhaps the axiom—that infringement and invalidity are separate matters under patent law.” Moreover, invalidity and infringement are not symmetric in the eyes of the law because of the presumption of validity.