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
______________________
WILLIAM F. LEE, Wilmer Cutler Pickering Hale and
Dorr LLP, of Boston, Massachusetts, filed a petition for
defendant-appellant. With him on the petition were
MARK C. FLEMING, JONATHAN W. ANDRON and FELICIA H.
ELLSWORTH; and WILLIAM G. MCELWAIN, of Washington,
DC. Of counsel on the petition 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.
MARK S. WERBNER, Sayles Werbner, P.C., of Dallas,
Texas, filed a response to the petition for plaintiff-
appellee. With him on the response were RICHARD A.
SAYLES and MARK D. STRACHAN. Of counsel on the
response were LESLIE V. PAYNE, NATHAN J. DAVIS and
MIRANDA Y. JONES, Heim, Payne & Chorush, of Houston,
Texas.
ROBERT L. KINDER JR., Dickstein Shapiro LLP, of
Washington, DC, for amici curiae SAP America, Inc. and
SAS Institute Inc. in support of the petition for rehearing
en banc. With him on the brief were JEFFREY K.
SHERWOOD; and DAWN L. RUDENKO, of New York, New
York.
______________________
Before RADER, Chief Judge, NEWMAN, LOURIE, DYK,
PROST, MOORE, O’MALLEY, REYNA, WALLACH, TARANTO,
and CHEN, Circuit Judges. 1
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.
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ORDER
A combined petition for panel rehearing and
rehearing en banc was filed by defendant-appellant, and a
response thereto was invited by the court and filed by
plaintiff-appellee. The petition for rehearing was referred
to the panel that heard the appeal, and thereafter the
1 Circuit Judge Hughes did not participate.
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 defendant-appellant for panel rehearing is
denied.
(2) The petition of defendant-appellant for rehearing en banc
is denied.
(3) The mandate of the court will issue on November 1, 2013.
FOR THE COURT
October 25, 2013 /s/ Daniel E. O’Toole
Date Daniel E. O’Toole
Clerk
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 an-
nounced 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 prece-
dent. And I took some comfort from the protocol that a
2 COMMIL USA v. CISCO SYSTEMS
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. Prece-
dent is contrary. See Medtronic, Inc. v. Cardiac Pacemak-
ers, 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, none-
theless 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
COMMIL USA v. CISCO SYSTEMS 3
“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.
