One way to challenge the validity of a patent at the United States Patent and Trademark Office (“USPTO”) is through a petition for inter partes review (“IPR”).  The USPTO Director has delegated responsibility to the Patent Trial and Appeal Board (“PTAB”) to evaluate such petitions to determine whether to institute review of the challenged patent.  The PTAB will only institute review of petitions that show a reasonable likelihood of success on the merits.  However, even if the petition meets that threshold for review, the PTAB may still deny institution.  In fact, the PTAB did just that when denying Cisco Systems Inc.’s (“Cisco”) petitions for IPR challenging the validity of two U.S. Patents owned by Ramot at Tel Aviv University (“Ramot”).  Cisco appealed the denial to the Court of Appeals for the Federal Circuit.

In June 2019, Ramot sued Cisco in the Eastern District of Texas for allegedly infringing its patents.  The case is set to go to trial in December 2020.  Cisco filed petitions for IPR of the asserted patents in November 2019.
Continue Reading No Right to Appeal Even When IPR Institution Denied on Non-Substantive Grounds

A U.S. patent is “presumed” valid. Audrey-Millemann-03_webThat 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. Commil sued Cisco for patent infringement, alleging that Cisco directly infringed the patent by making and using certain network equipment. Commil also alleged that Cisco indirectly infringed the patent by inducing infringement, that is, by selling the equipment to others and instructing them how to use the equipment, causing them to thereby infringe the patent.

At trial, the jury found that Cisco had directly infringed the patent. With respect to the claim of indirect infringement, Cisco contended that it did not have the required specific intent to induce infringement because it believed in good faith that the patent was invalid. The district court for the Eastern District of Texas ruled that Cisco’s evidence of its good faith belief was not admissible as a defense to infringement. The jury found Cisco liable to Commil and awarded Commil $63.7 million in damages.

Cisco appealed to the Federal Circuit Court of Appeals, arguing that the district court’s ruling was erroneous. The appellate court reversed the district court, holding that a good faith belief that a patent is invalid is sufficient to negate the required specific intent to induce infringement.


Continue Reading Just Because You Think It’s Invalid Doesn’t Mean You Don’t Infringe!