Commil USA, LLC v. Cisco Systems, Inc., 102513 FEDFED, 2012-1042

Docket Nº:2012-1042
Opinion Judge:PER CURIAM
Party Name:COMMIL USA, LLC, Plaintiff-Appellee, v. CISCO SYSTEMS, INC., Defendant-Appellant.
Attorney:Mark S. Werbner, Sayles Werbner, P.C., of Dallas, Texas, filed a petition for rehearing en banc for plaintiff-appellee. With him on the petition were Richard A. Sayles and Mark D. Strachan. Of counsel on the petition were Leslie V. Payne, Nathan J. Davis and Miranda Y. Jones, Heim, Payne & Chorus...
Judge Panel:Before Rader, Chief Judge, Newman, Lourie, Dyk, Prost, Moore, O'Malley, REYNA, Wallach, TARANTO, and Chen, Circuit Judges Reyna, Circuit Judge, with whom Rader, Chief Judge, and Newman, Lourie and Wallach, Circuit Judges, join, dissenting from the denial of the petition for rehearing en banc. New...
Case Date:October 25, 2013
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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COMMIL USA, LLC, Plaintiff-Appellee,

v.

CISCO SYSTEMS, INC., Defendant-Appellant.

No. 2012-1042

United States Court of Appeals, Federal Circuit

October 25, 2013

Appeal from the United States District Court for the Eastern District of Texas in case no. 07-CV-0341, Magistrate Judge Charles Everingham.

Mark S. Werbner, Sayles Werbner, P.C., of Dallas, Texas, filed a petition for rehearing en banc for plaintiff-appellee. With him on the petition were Richard A. Sayles and Mark D. Strachan. Of counsel on the petition were Leslie V. Payne, Nathan J. Davis and Miranda Y. Jones, Heim, Payne & Chorush, of Houston, Texas.

William F. Lee, Wilmer Cutler Pickering Hale and Dorr LLP, of Boston, Massachusetts, filed a response to the petition for defendant-appellant. With him on the response were MARK C. FLEMING, JONATHAN W. ANDRON, and FELICIA H. ELLSWORTH; and WILLIAM G. MCELWAIN, of Washington, DC. Of counsel on the response were HENRY B. GUTMAN, Simpson Thacher & Bartlett LLP, of New York, New York; and JEFFREY E. OSTROW, HARRISON J. FRAHN, IV, PATRICK E. KING, and JONATHAN SANDERS, of Palo Alto, California

Before Rader, Chief Judge, Newman, Lourie, Dyk, Prost, Moore, O'Malley, REYNA, Wallach, TARANTO, and Chen, Circuit Judges. 1

ON PETITION FOR REHEARING EN BANC

PER CURIAM

ORDER

A petition for rehearing en banc was filed by plaintiffappellee, and a response thereto was invited by the court and filed by defendant-appellant. The petition for rehearing en banc was first referred as a petition for rehearing to the panel that heard the appeal, and thereafter the petition for rehearing en banc and response were referred to the circuit judges who are authorized to request a poll of whether to rehear the appeal en banc. A poll was requested, taken, and failed.

Upon consideration thereof,

It Is Ordered That:

(1) The petition of plaintiff-appellee for panel rehearing is denied.

(2) The petition of plaintiff-appellee for rehearing en banc is denied.

(3) The mandate of the court will issue on November 1, 2013.

Reyna, Circuit Judge, with whom Rader, Chief Judge, and Newman, Lourie and Wallach, Circuit Judges, join, dissenting from the denial of the petition for rehearing en banc.

The Commil majority established a substantive, precedential change in patent law by expressly "hold[ing] that evidence of an accused inducer's good-faith belief of invalidity may negate the requisite intent for induced infringement." Commil USA, LLC v. Cisco Sys., Inc., 720 F.3d 1361, 1368 (Fed. Cir. 2013). Its analysis may be summed by its expressed view that because "[i]t is axiomatic that one cannot infringe an invalid patent" there is "no principled distinction between a good-faith belief of invalidity and a good-faith belief of non-infringement for the purpose of whether a defendant possessed the specific intent to induce infringement of a patent." Id.

By holding that a good faith belief in the invalidity of a patent may negate the requisite intent for induced infringement, the two-judge Commil majority created a new noninfringement defense to induced infringement that is premised on the accused infringer's belief of invalidity. As Judge Newman aptly points out in her dissent, "This absolution applies, according to the panel majority, although the patent receives the presumption of validity, and validity is sustained in litigations." (Newman, J., dissenting from the denial of the petition for rehearing en banc, at 1.)

Because I believe the Commil majority opinion is without foundation in law and precedent, and for the reasons stated below, I respectfully dissent from the vote taken of the court to not conduct an en banc review of the majority opinion in Commil.

I.

My primary dispute with the...

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