March 23, 2015

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Wyche Inside IP
By Wallace K. Lightsey

On March 31, the U.S. Supreme Court will hear oral arguments in two important patent cases. How will it decide? Here are our predictions.

In Commil USA, LLC v. Cisco Systems, Inc., the Court will consider whether a defendant’s good-faith belief that a patent is invalid is a defense to a claim of induced infringement. In Kimble v. Marvel Enterprises, Inc., the Court will examine whether it should overturn a previous decision by it (Brulotte v. Thys Co.) that a patent licensee’s obligations are absolved after the patent expires, and that a patent holder’s attempt to collect royalties after expiration constitutes patent misuse.

Predicting what the Supreme Court will do is always a hazardous enterprise, but in the spirit of March Madness I will take my best shot. Since the Court has embarked on a campaign to make it easier for courts and parties to fight patent trolls, I think the Court will side with the defendant in Commil USA and hold that a good faith belief of invalidity is a defense in an induced infringement case. The Kimble case is harder to call. The previous decision in question, Brulotte, has been criticized by many courts and commentators as preventing efficient and pro-competitive license transactions, which will find a sympathetic ear with the free market philosophy of several of the Justices. Nevertheless, given the Court’s recent attacks on patent abuse, I think the Court will reaffirm Brulotte on the ground of the patent law’s policy of preventing enforcement of contracts that impair the public’s access to patented inventions after the patent expires.

We will continue to follow these cases and report on them further in our next edition of Wyche Inside IP.

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