U.S. SUPREME COURT TO HEAR ARGUMENTS ON INDUCED PATENT INFRINGEMENT AND POST-EXPIRATION PATENT ROYALTIES
Today the U.S. Supreme Court will hear arguments in two patent cases, Commil USA, LLC v. Cisco Systems, Inc., 13-896 and Kimble v. Marvel Enterprises, Inc., 13-720. IPO filed amicus briefs in both cases.
At issue in Commil is whether the Federal Circuit erred in holding that a defendant’s belief that a patent is invalid is a defense to induced infringement under Patent Act section 271(b). Commil’s patent claimed a method for providing mobile phone base station “hand-offs” throughout a communications network. A split Federal Circuit panel overturned a district court’s finding of inducement to infringe. A divided Federal Circuit denied a petition for en banc rehearing. To read the question presented as posted on the Supreme Court website, click here.
In Kimble, the court will consider whether to overrule its 1964 opinion in Brulotte v. Thys Co., which held that a license agreement requiring royalty payments for use of a patented invention after the expiration of the patent term is unlawful per se. Kimble’s patent claimed a toy glove for shooting string foam. Kimble entered into a license agreement with Marvel for 3% of net product sales. In a subsequent dispute, the 9th Circuit upheld a district court finding that the royalty obligation ended when the patent expired. To read the question presented as posted on the Supreme Court website, click here.
