US Solicitor General, Don Verrilli, Tells Supreme Court That Of Course You Can Infringe On An Invalid Patent

from the shockingly-unshocking dept

Mon, Oct 27th 2014 9:00am — Mike Masnick

Nine years ago, the US Supreme Court ruled in the Grokster case in favor of the movie studios, effectively expanding copyright law to include an "inducement" standard that is not present in the actual text of the law (in fact, Congress had just rejected an attempt to add some inducement language to copyright law in the form of the INDUCE Act). A big part of the reasoning by the Supreme Court was to pull from the inducement standard that was found in patent law, and say it applies to copyright law:

For the same reasons that Sony took the staple-article doctrine of patent law as a model for its copyright safe-harbor rule, the inducement rule, too, is a sensible one for copyright. We adopt it here, holding that one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties.

It's worth noting that the lawyer who represented the studios in the Grokster case was... Donald Verrilli, a favorite lawyer of both the MPAA and RIAA in cases that involved expanding copyright law. After President Obama was elected, Verrilli was tapped for the Justice Department and then to be Solicitor General -- basically the White House's lawyer for the Supreme Court.

Given all that, it's perhaps no surprise, even if it's disappointing, to see that Verrilli is still pushing to massively expand the nature of inducement. In a long and ongoing patent infringement case, Commil v. Cisco, the appeals court for the federal circuit (CAFC) ruled last year that the lower court had erred in jury instructions concerning whether or not Cisco was guilty of "inducing" patent infringement, because the jury instructions said that Cisco could be guilty since "Cisco knew or should have known that its actions would induce actual infringement." CAFC said that the "should have known" part was problematic, because that's a negligence standard which isn't appropriate here. Commil appealed on that point (there are other points being appealed, but let's stick to that one). Back in May, the Supreme Court asked Verrilli if he wanted to weigh in, and a few weeks ago he did.

Take a guess what he argued? Yup. He argued that the Supreme Court should take the case and overturn the CAFC ruling (something we normally appreciate, but not this time), as he apparently believes a very broad definition of inducement is absolutely fine. That this would further help a bunch of his former clients goes unstated.

The court of appeals erred in holding that a defendant’s good-faith belief that the patent in question is invalid is a defense to inducement liability under Section 271(b). That holding is inconsistent with the Patent Act’s text and structure, and it may undermine Section 271(b)’s efficacy as a means of deterring and remedying infringement. This Court’s review is warranted.

Got that? That's Verrilli, using the power of the US government behind him, to argue that you can still be found guilty of "inducing infringement" even if you have a "good faith belief" that the underlying claim is totally invalid. The filing relies heavily on a different case, the Global-Tech v. SEB, which had found that in order to induce infringement you had to actually know that the action was patent infringement. By any rational discussion, that ruling should support Cisco's argument, that a good faith belief in invalidity shouldn't lead to inducement. But Verrilli spins in the other way.

As explained above, Global-Tech does not resolve whether the defendant must know in addition that the induced conduct actually infringed the patent. But regardless of how that question is ultimately decided, Section 271(b) neither requires knowledge of the patent’s validity nor suggests that a good-faith belief in invalidity is a proper defense. The inducee’s unauthorized performance of all steps of a patented method constitutes "infringement," even if the patent is ultimately found to be invalid. Thus, even if Section 271(b) is held to require proof that the defendant knew the induced conduct would constitute actual "infringement," the defendant’s good-faith belief in the invalidity of the patent would not suggest that such knowledge was lacking.

Even more unfortunately, Verrilli attacks the point that CAFC makes that you can't infringe on an invalid patent. CAFC noted "it is axiomatic that one cannot infringe an invalid patent." Nuh-uh, claims Verrilli. Of course you can infringe on an invalid patent:

A patent is infringed, regardless of its validity if the defendant has practiced all of its elements without authorization.

He says all invalidity does is "preclude liability from that infringement." Got that? Even if the patent is totally invalid, you can still infringe on it, you just can't be held liable for it. Welcome to upside down world -- where infringement is the standard, and not infringing on an invalid patent is some sort of exception or defense against liability.

There's a lot more in there, but he seems particularly upset that the CAFC ruling might actually lead to more defendants pointing to a good faith belief that they weren't infringing as a defense (and even cites the Grokster case). Instead, it seems he (and by his voice, the power of the US executive branch) believes that even if you're totally sure that a patent is invalid, you can still be found guilty of inducing infringement of it. If his theory is true, it actually seems like a huge indictment of just how ridiculous patent law is that such a result is considered possible, let alone reasonable.

Commil v Cisco OSG Invitation Brief (PDF)Commil v Cisco OSG Invitation Brief (Text)

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Filed Under: don verrilli, infringement, invalidity, patents, solicitor general, supreme court
Companies: cisco, commil

37 Comments

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Ninja (profile), 27 Oct 2014 @ 8:12am

And then these people wonder why people don't respect the bullshit that copyrights have become. Maybe if the MAFIAA stopped pushing for expansions and to have all ways when concerning copyright (fair use for me but not for thee as an example) we could start talking. Till then I couldn't care less about copyrights.
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antidirt (profile), 27 Oct 2014 @ 8:54am

Even more unfortunately, Verrilli attacks the point that CAFC makes that you can't infringe on an invalid patent. CAFC noted "it is axiomatic that one cannot infringe an invalid patent." Nuh-uh, claims Verrilli. Of course you can infringe on an invalid patent:
A patent is infringed, regardless of its validity if the defendant has practiced all of its elements without authorization.
He says all invalidity does is "preclude liability from that infringement." Got that? Even if the patent is totally invalid, you can still infringe on it, you just can't be held liable for it. Welcome to upside down world -- where infringement is the standard, and not infringing on an invalid patent is some sort of exception or defense against liability.

So are you arguing that that's not an accurate statement of the law, or is your complaint that you don't like the law? I think the statement makes sense. Under 35 USC 282, the patent is "presumed valid." And anyone who "makes, uses, offers to sell, or sells" that presumptively valid patent "infringes the patent." 35 USC 271. "Noninfringement" and "invalidity of the patent" are defenses to infringement. 35 USC 282. First the plaintiff proves infringement, then the defendant proves a defense. How else would you have it work?
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Anonymous Coward, 27 Oct 2014 @ 9:14am

Infringement until proven innocent.
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AJ, 27 Oct 2014 @ 9:18am

Re:
I don't totally understand either.

It sounds like he's saying that you can infringe on a patent, even if the patent is found to be invalid, you just can't be held liable for said infringement as long as you had a "good faith" belief that that the patent was in fact invalid at the time of the infringement, however, this Verrilli fellow thinks you should still be liable for inducement..... I think...
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Anonymous Coward, 27 Oct 2014 @ 9:25am

Re:
For starters, I'd probably word the law so that a patent that has been declared "invalid" can't be used as the basis for a lawsuit claiming said patent has been infringed upon.
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AJ, 27 Oct 2014 @ 9:35am

Re: Re:
I read it again... for the third time... i think i get it now, but damn what a mess.

Back in the day, there was a law in N.C., it may have been in Waynesville... that say's you can't drive down main street in a motorized vehicle. Yes, there is 2 lane road, yes there are signs and a speed limit, yes there are several metered (by the city) parking spaces, one of which had a judge's name on it,... Verrilli would be the guy arguing that it's still illegal to drive on it and write you a ticket.
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Jon Renaut (profile), 27 Oct 2014 @ 9:36am

Once a patent is ruled invalid, it's not really a patent anymore, so you shouldn't be able to infringe. However, until that point, even if you're really really really sure it's going to be invalidated, you have to take it as valid.
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DannyB (profile), 27 Oct 2014 @ 9:49am

Fantastic news!
Now the USPTO can continue issuing invalid patents.

This saves huge taxpayer resources by easing the patent examination process. Just drop patent applications into a room full of cats with PATENT GRANTED stamps affixed to their feet.
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Anonymous Coward, 27 Oct 2014 @ 9:50am

I agree in part and disagree in part.
I do believe that "a good faith basis for invalidity" is NOT a valid defense. Who would get to decide what forms good faith belief? The fact that the patent office granted a patent should be a presumption that it IS valid. (the actuality of this statement is a whole other issue and argument, I agree).

However, if a patent is ruled invalid, it is void, never having existed. One can't infringe on a patent which is later ruled invalid. If before or during trial, the patent is ruled invalid, that should moot the case, resulting in no infringement found.

However at what point should the invalid ruling affect the case? What if after trial, during an appeal the Patent office rules it invalid? What about after the appeal, but while judgement is pending, or payment of fines? What about years after a court ruling, and after payments have been made?
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John Fenderson (profile), 27 Oct 2014 @ 9:51am

Lawyers
A patent is infringed, regardless of its validity if the defendant has practiced all of its elements without authorization.

I think I understand what he's saying here: that if you do what the patent says, then you are logically "infringing" on the patent, and that's a separate issue from whether or not the patent actually carries any legal weight.

If my interpretation is correct, then he's just playing word games -- and the exact sort of word games that makes people hold lawyers in such low esteem.
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Adam, 27 Oct 2014 @ 9:52am

Just like any other crime
Is not knowing that you're committing a crime, be it patent infringement, theft, or murder, a valid defense?
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Anonymous Coward, 27 Oct 2014 @ 9:54am

It makes sense in a bad kind of way. Is this much different from a person who serves a jail sentence, then the law he violated is ruled unconstitutional. So his punishment is valid even though the law it's based on is invalid.
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Donglebert The Needlessly Unready, 27 Oct 2014 @ 9:55am

which is why
the first port of call for any such cases should be to review the patent - something that should be far quicker and cheaper than a full on lawsuit.
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Anonymous Coward, 27 Oct 2014 @ 9:56am

another jumped up fucker who has sold his soul to Hollywood and the entertainment industries and just throwing everything he can possibly think of behind another way of getting the entertainment industries more control!
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Anonymous Coward, 27 Oct 2014 @ 9:57am

Re:
That is biasing the law in favor of the trolls, as the can claim that they are owed license fees for an invalid patent for the period it was assumed valid.
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Anonymous Coward, 27 Oct 2014 @ 10:10am

Re: Re: Re:
But there are 'valid' reasons for these kind of seemingly stupid laws on the books that everyone breaks every day. It's all about selective enforcement. If authorities don't like someone, but can't find anything to charge him with, they can always pull these aces out of their sleeves.
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Anonymous Coward, 27 Oct 2014 @ 10:26am

So, how would this standard work if I start billing people for invalid things they don't owe me? If they don't pay me they're then guilty of 'inducing' non-payment and I can send my invalid bills to debt collectors.
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Spaceman Spiff (profile), 27 Oct 2014 @ 10:31am

Revolving door
I'm sure that Verrilli will be amply rewarded with a lucrative position in the entertainment industry after he leaves his currently underpaid government position. A little bit of quid-pro-quo here?
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DannyB (profile), 27 Oct 2014 @ 10:33am

Re:
Wrong. Plaintiffs with invalid patents DO NOT first prove infringement. That is the one thing that want to stay far away from. Ideally they want to also stay far away from a court room.
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David, 27 Oct 2014 @ 10:34am

Almost religious
Sounds like the Original Infringement doctrine of the media industries.
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Anonymous Coward, 27 Oct 2014 @ 10:53am

Re: Revolving door
It's practically a given that Verrilli's journey through the revolving door has only just begun. His current position as top government official is just a stepping stone to a lucrative career in Washington DC's rapidly growing "private sector". And since he surely knows very well which side his bread is buttered on, he's not about to do anything that would upset his former -- and probably future-- employer.
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John Fenderson (profile), 27 Oct 2014 @ 10:55am

Re: Just like any other crime
It depends on the crime. There are many activities that are only prosecutable if you were aware they were illegal when you did them.
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Anonymous Coward, 27 Oct 2014 @ 11:20am

Re:
Sadly civil law is not setup for those processes. There is a heavy favouring of isolating each case of any later occurances.

That is also why the german 2-step system in patent cases is so incredibly unacceptable. When a person has a choice of getting a relatively fast and cheap declaration on if infringement occured or a slow and expensive declaration on the validity of the patent, that is not much of a choice for most...

Again the isolation approach invariably presumes that the patent office is always right and you have the burden of proof if you want to overturn its law.
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Anonymous Coward, 27 Oct 2014 @ 11:22am

Re:
for starters an invalid patent is just that ... invalid which means there is no patent on a unicorn because there's no such thing it is not valid does not exist.
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Jon Renaut (profile), 27 Oct 2014 @ 11:57am

Re: which is why
I don't know that you can make that automatic - it's too easy to file a lawsuit, and you could end up triggering an awful lot of useless work.

Maybe someone being sued over a patent could request some time to review it and then challenge the validity before the actual trial starts?
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Jon Renaut (profile), 27 Oct 2014 @ 11:59am

Re: Re:
Unfortunately, they probably ARE. I'm not sure whether patent invalidations are retroactive?

The real solution is to stop approving patents on garbage, but that seems unlikely to happen.
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Digger, 27 Oct 2014 @ 12:09pm

Guess What Don - you're a flaming imbecile
If a Patent is invalid, then there is NO patent to infringe upon.

Chicken vs Egg problem here you flaming dolt.

btw - there's no such thing as Inducement either, so shut the fuck up you corrupt corporate slave.
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Anonymous Coward, 27 Oct 2014 @ 12:17pm

Re:
> So are you arguing that that's not an accurate statement of the law, or is your complaint that you don't like the law? I think the statement makes sense. Under 35 USC 282, the patent is "presumed valid." And anyone who "makes, uses, offers to sell, or sells" that presumptively valid patent "infringes the patent." 35 USC 271. "Noninfringement" and "invalidity of the patent" are defenses to infringement. 35 USC 282. First the plaintiff proves infringement, then the defendant proves a defense. How else would you have it work?

The case is not about patent infringement, it's about inducement. Requiring the inducement to be for infringement of a valid patent is inherently necessary.

Hypothetical: Sal Goodman bribes a patent examiner to approve a patent on "method of using a wheel for transportation" issued this year. He then goes around filing inducement lawsuits against anyone who makes cars, bicycles, cable elevators or furniture with casters.

Your position would have him win all of those lawsuits because those companies are inducing infringement of that patent notwithstanding that the patent is blatantly invalid.
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That One Guy (profile), 27 Oct 2014 @ 2:24pm

Goodbye VCR, was nice knowing you cassette player
For the same reasons that Sony took the staple-article doctrine of patent law as a model for its copyright safe-harbor rule, the inducement rule, too, is a sensible one for copyright. We adopt it here, holding that one who distributes a device with the object of promoting its use to infringe copyright, as shown by clear expression or other affirmative steps taken to foster infringement, is liable for the resulting acts of infringement by third parties.

I can't help but think, if this had been a part of the law when the VCR was first rolled out, it almost certainly would not have survived the court battles brought against the technology, because clearly the VCR only existed in order to violate copyright law.

Same with cassette recorders/players, the only possible use those have is breaking copyright, so that better be outlawed too, along with any technological advancements along those lines.
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Ray Trygstad (profile), 27 Oct 2014 @ 2:42pm

Curiouser and curiouser...
The idea that someone could be guilty of inducing infringement of an invalid patent would seem to be close to the ultimate in Alice-in-Wonderland law.
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Anonymous Coward, 27 Oct 2014 @ 5:44pm

Re: Goodbye VCR, was nice knowing you cassette player
Exactly. For all the shilling and whining the trolls do about getting shouted down, they're forgetting one thing - paying enough money to shout down everyone else is precisely what the corporate interests they shill for are doing, except with far greater consequences.
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Anonymous Coward, 27 Oct 2014 @ 6:17pm

Re: Re:
Oh, that's still the law. You can't infringe on an invalid patent. Verrilli is claiming that you can be liable for inducing infringement of a patent, even if it's not possible to actually infringe upon that patent. This is because Verrilli is a corporate shill whose appointment was purchased by special interest groups.
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Anonymous Coward, 27 Oct 2014 @ 8:31pm

So...by that logic, it's possible to break an none existant law and be charged for it?
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Eldakka (profile), 27 Oct 2014 @ 10:17pm

Re: Lawyers
that if you do what the patent says, then you are logically "infringing" on the patent,

This is what I don't understand.

If a patent is not valid, it is not a patent. It is a document describing something, it is not a patent. Therefore you can't be "doing what the patent says" because there is no patent. You can be doing what the document describes, but that document is not a patent. It might be a FORMER patent.

A patent is (blatantly copied from USPTO)

a property right granted by the Government of the United States of America to an inventor “to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States” for a limited time...

If a patent is invalid, then there is no property grant, therefore there is no patent, therefore it is not possible to infringe.
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John Fenderson (profile), 28 Oct 2014 @ 12:59pm

Re: Re: Lawyers
Yes, I agree. The word games I'm referring to is over using the word "patent" instead of the words "patent application" or "patent filing".
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Pragmatic, 29 Oct 2014 @ 8:33am

Re: Re:
Precisely. Ka-chingggg!!
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Carlie Coats (profile), 30 Oct 2014 @ 3:55am

Already slanting the language
By saying "a property right granted by the Government...", the patent-lawyers are already slanting the matter. They should say "a limited monopoly granted by the Government..." Calling it "property" starts the matter off with a lie.
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