NOTE: This disposition is nonprecedential. 

United States Court of Appeals 

for the Federal Circuit ______________________ 

COMMIL USA, LLC,

Plaintiff-Appellee,

v.

CISCO SYSTEMS, INC.,

Defendant-Appellant.

______________________ 

2012-1042 

______________________ 

Appeal from the United States District Court for the 

Eastern District of Texas in case no. 07-CV-0341, 

Magistrate Judge Charles Everingham. 

______________________ 

ON PETITION FOR PANEL REHEARING AND 

REHEARING EN BANC 

______________________ 

MARK S. WERBNER, Sayles Werbner, P.C., of Dallas, 

Texas, filed a petition for rehearing en banc for plaintiffappellee. 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

REYNA, Circuit Judge, with whom RADER, Chief Judge, 

NEWMAN, LOURIE, and WALLACH Circuit Judges, join, 

dissents from the denial of the petition for rehearing en 

banc. 

NEWMAN, Circuit Judge, with whom RADER, Chief Judge, 

REYNA and WALLACH, Circuit Judges, join, dissenting 

from the denial of the petition for rehearing en banc. 

PER CURIAM. 

______________________ 

O R D E R 

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 

 1 Circuit Judge Hughes did not participate. 
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. 

 

FOR THE COURT

 

October 25, 2013 

Date 

/s/ Daniel E. O’Toole 

 Daniel E. O’Toole 

 Clerk 

 
NOTE: This disposition is nonprecedential. 

United States Court of Appeals 

for the Federal Circuit ______________________ 

COMMIL USA, LLC, 

Plaintiff-Appellee, 

v.

CISCO SYSTEMS, INC.,

Defendant-Appellant.

______________________ 

2012-1042 

______________________ 

Appeal from the United States District Court for the 

Eastern District of Texas in No. 07-CV-0341, Magistrate 

Judge Charles Everingham. 

______________________ 

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 noninfringement 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 majority holding is that 

it wrongly rearranges the legal foundation that underpins 

the enforceability of valid patents and the finding of 

liability for infringement. 

First, the induced infringement statute states simply 

that “[w]hoever actively induces infringement of a patent 

shall be liable as an infringer.” 35 U.S.C. § 271(b). The 

law recognizes that the statute’s use of the words 

“actively induces” imparts an intent requirement into the 

statute. As stated by the Supreme Court, “[t]he addition 

of the adverb ‘actively’ suggests that the inducement must 

involve the taking of affirmative steps to bring about the 

desired result.” Global-Tech. Appliances, Inc. v. SEB 
S.A., 131 S. Ct. 2060, 2065 (2011). In § 271(b), the 

“desired result” that a party accused of inducement must 

be affirmatively seeking to bring about is defined in the 

statute as simply “infringement.” 

The term “infringement” is used consistently 

throughout § 271 to mean that all of the limitations of a 

patent claim are satisfied by an accused product or 

accused conduct. See, e.g., TecSec, Inc. v. Int’l Bus. Mach. 

Corp., --- F.3d ----, No. 2012-1415, 2013 WL 5452049, at 

*13 (Fed. Cir. 2013) (citations omitted) (“An act of 

infringement occurs when all the elements of a claimed 

product or method are met by the accused device or 

process.”). In Global-Tech, the Court concluded that in 

order to satisfy the intent element of induced 

infringement under § 271(b), an accused infringer must 

possess “knowledge that the induced acts constitute 

patent infringement,” Global-Tech., 131 S. Ct. at 2068, 

but it did not alter the fundamental meaning of 

“infringement.” Our recent en banc decision in Akamai 

further confirms that “infringement” in the context of 

“induced infringement” is resolved solely with reference to 

the limitations of a patent claim. See Akamai Techs., Inc. 

v. Limelight Networks, Inc., 692 F.3d 1301, 1306 (Fed. 

Cir. 2012) (“we hold that all steps of a claimed method 

must be performed in order to find induced 

infringement”). 

The legislative history explains that the language of 

§ 271(b) “recites in broad terms that one who aids and 

abets an infringement is likewise an infringer.” H.R. Rep. 

No. 82–1923, at 9. Neither the statute nor its legislative 

history provides that one who knowingly and successfully 

induces another to engage in conduct that infringes a 

valid patent can escape liability by showing it held a good 

faith belief that the patent was invalid. Indeed, the 

rationale for imposing liability on the party who is 

inducing infringement is simple: one who causes, urges, 

encourages, or aids in an infringement is just as, if not 
more, culpable for the invasion of the patentee’s exclusive 

rights than those who actually perform the acts of 

infringement. See generally Akamai, 692 F.3d at 1309-13. 

Yet, under the majority’s holding, an accused inducer that 

is deriving a benefit by knowingly and intentionally 

inducing an unsuspecting third party to directly infringe 

patent rights can itself escape liability based on a belief 

that the patent is invalid while the unsuspecting third 

party cannot. This situation is directly contrary to the 

plain language and purpose of the induced infringement 

statute. 

II. 

Second, infringement and invalidity are separate 

issues under the patent code and our precedent. This is 

not controversial. We have “long recognized that patent 

infringement and invalidity are separate and distinct 

issues.” Pandrol USA, LP v. Airboss Ry. Prods., Inc., 320 

F.3d 1354, 1365 (Fed. Cir. 2003). This distinction is 

further reflected in the organization of the patent code, 

which places the issues of infringement and invalidity in 

separate “Parts.” Compare 35 U.S.C. §§ 251-329 (Part III: 

“Patents and Protection of Patent Rights”), with 35 U.S.C. 

§§ 100-212 (Part II: “Patentability of Inventions and 

Grant of Patents”). 

Given this, there is no reasonable basis to impute 

questions of invalidity or liability into § 271(b) through 

the term “infringement.” If a patent is found invalid, that 

is a complete defense to liability because it negates the 

patent’s existence and thereby extinguishes any 

exclusionary rights. Conversely, if there is a patent—i.e., 

it is not invalid—then the question is merely whether 

there has been conduct that actively induces acts of 

infringement per se. This too is not controversial under 

our precedent because we have long recognized that 

“[t]hough an invalid claim cannot give rise to liability for 

infringement, whether it is infringed is an entirely 
separate question capable of determination without 

regard to its validity.” Medtronic, Inc. v. Cardiac 

Pacemakers, Inc., 721 F.2d 1563, 1583 (Fed. Cir. 1983) 

(emphasis added). 

Despite that “Supreme Court precedent and our cases 

make clear that patent infringement and patent validity 

are treated as separate issues,” Pandrol, 320 F.3d at 

1365, the Commil majority nevertheless imputes 

questions of invalidity into induced infringement under 

the guise of “intent.” It attempts to justify this departure 

from controlling precedent on the premise that “[i]t is 

axiomatic that one cannot infringe an invalid patent.” 

Commil, 720 F.3d at 1368. But this “axiom” is materially 

wrong in the present context and does not withstand 

scrutiny in view of controlling precedent. See, e.g., 

Medtronic, 721 F.2d at 1583. A more accurate statement 

of our precedent is that liability for patent infringement 

depends on an infringed claim being valid and 

enforceable; that is, one cannot be liable for infringement 

of an invalid patent. 

III. 

Third, the Commil majority holding wrongly conflates 

the defense of noninfringement with the defense of 

invalidity. “An important limitation on the scope of 

induced infringement is that inducement gives rise to 

liability only if the inducement leads to actual 

infringement.” Akamai, 692 F.3d at 1308. The Commil 

majority expands the inquiry regarding noninfringement 

to include invalidity on grounds that it “see[s] 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.” Commil, 720 

F.3d at 1368. This statement ignores the statutorilymandated presumption of validity, see § 282(a), in that it 

sets up all patents as invalid, at least in the mind of the 
inducer. In doing so, the majority strikes at the very 

heart of the presumption of validity by eroding patent 

rights that have been duly granted by the PTO based 

solely on an erroneous—albeit good faith—belief that the 

PTO erred in granting the patent. This has profound and 

negative implications that are not contemplated by the 

patent statute. 

Conflating infringement and invalidity also 

unnecessarily complicates the induced infringement 

inquiry. In this regard, infringement and noninfringement are opposite sides of the same coin whereas 

infringement and invalidity are altogether entirely 

different coins. The intent element of § 271(b) is met 

when the accused infringer acts with actual knowledge of 

the patent claim and was “actively inducing” conduct that 

it knew to be within the scope of an asserted claim. See 

Akamai, 692 F.3d at 1308. Whether the accused infringer 

held a good faith belief that it was inducing conduct that 

fell outside the scope of the claims is directly relevant to 

this intent inquiry. But whether the accused infringer 

held a good faith belief in invalidity—e.g., an erroneous 

belief regarding obviousness—is wholly unrelated to the 

accused infringer’s conduct vis-à-vis the limitations of a 

presumptively valid patent claim. These fundamental 

differences between the defenses provide a reasoned and 

legally sound basis for differentiating between a good 

faith belief of non-infringement and a good faith belief in 

invalidity in the context of induced infringement. 

* * * 

There exists another axiom of more universal 

application that is appropriate here: “if it’s not broken, 

don’t fix it.” The Commil majority has strained to fix 

current law without ever showing exactly what is broken, 

and its fix has been to create an entirely new 

infringement defense, a new rule of law. 
 In addition, the majority does not instruct the lower 

courts how they are to apply the fix. Is the new rule a 

question of fact? Is it a question of law? Is it a question 

of law with underlying factual basis? Should the question 

of good faith belief of invalidity be tried along with the 

invalidity issues, or perhaps before any other issues are 

heard given its determinative effect on the outcome of the 

case? 

A grave concern that I have with the new rule is that 

it fundamentally changes the operating landscape, much 

like waking up and unexpectedly finding that the sky is 

now green. The new rule is a powerful tool in patent 

litigation in that it establishes an escape hatch from 

liability of infringement that is not now in the statute. 

This has a compromising effect on the only axiom that we 

should all observe, and that is issued patents are 

presumed valid. 

 
NOTE: This disposition is nonprecedential. 

United States Court of Appeals 

for the Federal Circuit ______________________ 

COMMIL USA, LLC, 

Plaintiff-Appellee, 

v.

CISCO SYSTEMS, INC.,

Defendant-Appellant.

______________________ 

2012-1042 

______________________ 

Appeal from the United States District Court for the 

Eastern District of Texas in No. 07-CV-0341, Magistrate 

Judge Charles Everingham. 

______________________ 

NEWMAN, Circuit Judge, with whom RADER, Chief Judge, 

REYNA and WALLACH, Circuit Judges, join, dissenting 

from the denial of the petition for rehearing en banc. 

By decision issued June 25, 2013, a split panel 

announced a change in the law of induced infringement, 

creating a new rule of law whereby an adjudged inducer 

of infringement is absolved of liability for infringement if 

the infringer had a “good faith belief” that the patent it 

infringed was invalid. This absolution applies, according 

to the panel majority, although the patent has a statutory 

presumption of validity, and validity of the patent is 

litigated and sustained. I explained, in my dissenting 
opinion, why this position is contrary to law and 

precedent. And I took some comfort from the protocol 

that a panel cannot change the law established by 

decisions of the court; only the en banc court can do so. 

Indeed, it is not “axiomatic that one cannot infringe 

an invalid patent” as the majority opinion states. 

Precedent is contrary. See Medtronic, Inc. v. Cardiac 

Pacemakers, Inc., 721 F.2d 1563, 1583 (Fed. Cir. 1983) 

(“Though an invalid claim cannot give rise to liability for 

infringement, whether it is infringed is an entirely 

separate question capable of determination without 

regard to its validity.”); Spectra-Physics, Inc. v. Coherent, 

Inc., 827 F. 2d 1524, 1535 (Fed. Cir. 1987) (“The single 

instruction to the jury that invalid claims cannot be 

infringed (a nonsense statement), one of many on 

supposed general principles of patent law, does not 

operate to convert the interrogatories on infringement 

into general verdicts which subsumed all of Spectra’s 

invalidity defenses, including best mode.”). If the court 

now wishes to change this law, it must be done en banc. 

It disserves the public, and diminishes the court, to 

continue to issue conflicting statements. 

Now, however, the full court’s majority refusal of en 

banc review of the panel’s ruling adds uncertainty to the 

law and its application. Investors, competitors, and trial 

courts cannot be confident as to the law that will be 

applied by the Federal Circuit. Such destabilization is a 

disservice not only to patentees but also to the public that 

benefits from technological advance. A court’s creative 

judicial rulings are readily clarified; our refusal to do so in 

patent cases not only spawns avoidable litigation but also 

is a disincentive to industrial innovation. 

To compound the inequity, here the panel majority, on 

remanding for retrial of infringement with the defense 

that the infringer believed the patent to be invalid, 

nonetheless does not permit retrial of validity. In the 
posture of the remand, the prior jury verdict of validity is 

the law-of-the-case. However, the issues of infringement 

and validity are interwoven in the new defense of 

subjective “belief”, and the restricted remand procedure 

can impart “confusion and uncertainty, which would 

amount to a denial of a fair trial.” Anderson v. Siemens 

Corp., 335 F.3d 466, 475–76 (5th Cir. 2003). It is only fair 

that the new jury, at a new trial for determination of this 

“belief”, receives full evidence of the premises. At a 

minimum, the panel’s instructions for limited retrial 

should receive en banc review. 

Thus I must, respectfully, dissent from denial of the 

request for rehearing en banc.