Commil USA, Llc v. Cisco Systems, Inc.

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.
______________________
Decided: June 25, 2013
______________________
MARK S. WERBNER, Syles Werbner, P.C., of Dallas,
Texas, argued for plaintiff-appellee. With him on the
brief were RICHARD A. SAYLES and MARK D. STRACHAN. Of
counsel on the brief 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, argued for defend-
ant-appellant. With him on the brief were MARK C.
FLEMING, JONATHAN W. ANDRON and FELICIA H.
2 COMMIL USA v. CISCO SYSTEMS
ELLSWORTH; and WILLIAM G. MCELWAIN, of Washington,
DC. Of counsel on the brief 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 NEWMAN, PROST, and O’MALLEY, Circuit Judges.
Opinion for the court filed by Circuit Judge PROST.
Opinion concurring-in-part, dissenting-in-part filed by
Circuit Judge NEWMAN.
Opinion concurring-in-part, dissenting-in-part filed by
Circuit Judge O’MALLEY.
PROST, Circuit Judge.
Cisco Systems, Inc. appeals from the final judgment of
the United States District Court for the Eastern District
of Texas, which was based on the findings of two separate
jury verdicts finding that: Cisco directly and indirectly
infringed specified claims of Commil USA, LLC’s U.S.
Patent No. 6,430,395 (“’395 patent”); the specified claims
of the ’395 patent are not invalid as indefinite, for lack of
enablement, or as lacking adequate written description;
and that Cisco was liable for $63,791,153 in damages as
well as pre-judgment interest and costs. We find that the
district court gave the jury a legally erroneous instruction
with respect to indirect infringement. Additionally, we
find that Cisco’s evidence of a good-faith belief of invalidi-
ty may negate the requisite intent for induced infringe-
ment. However, we find that the district court did not err
in granting a partial new trial. Thus, we affirm-in-part,
vacate-in-part, and remand for further proceedings con-
sistent with this opinion.
COMMIL USA v. CISCO SYSTEMS 3
I. BACKGROUND
A. THE PATENT AND ACCUSED PRODUCTS
In a wireless system, mobile devices such as phones
and laptop computers communicate with fixed “base
stations” according to standardized procedures that
govern the way in which data exchanged between devices
is formatted, ordered, maintained, and transmitted.
These procedures are referred to as “protocols.” Effective
wireless communication requires that the transmitting
device and the receiving device follow the same protocol.
The ’395 patent relates to a method of providing faster
and more reliable handoffs of mobile devices from one
base station to another as a mobile device moves through-
out a network area. The ’395 patent teaches that the
communication protocol is divided based on time sensitiv-
ity. The portions of the protocol requiring accurate time
synchronization—“real-time capabilities”—are performed
at the base station. This part of the protocol is called the
“low-level protocol.” Other parts of the protocol that are
not time-sensitive comprise the “high-level protocol,”
which is performed on another device called a switch. The
base station and switch cooperate to handle a connection
with a mobile unit. To implement the full communica-
tions protocol, the base station runs an instance of the
low-level protocol for the connection and the switch runs a
corresponding instance of the high-level protocol.
Cisco is a major supplier of WiFi access points and
controllers. Commil alleges that certain Cisco access
points and controllers infringe claims 1, 4, and 6 of the
’395 patent. Claim 1, the patent’s sole independent claim,
provides:
In a wireless communication system comprising at
least two Base Stations, at least one Switch in
communication with the Base Stations, a method
4 COMMIL USA v. CISCO SYSTEMS
of communicating between mobile units and the
Base Stations comprising:
dividing a short-range Communication protocol
into a low-level protocol for performing tasks that
require accurate time synchronization and a high-
level protocol which does not require accurate
time synchronization; and
for each connection of a mobile unit with a Base
Station, running an instance of the low-level pro-
tocol at the Base Station connected with the mo-
bile unit and running an instance of the high-level
protocol at the Switch.
B. THE DISTRICT COURT PROCEEDINGS
A jury trial commenced on May 10, 2010. On May 17,
2010, the jury returned a verdict rejecting Cisco’s invalid-
ity contentions, finding Cisco liable for direct infringe-
ment, and awarding Commil $3.7 million in damages.
The jury also found that Cisco was not liable for induced
infringement. Commil filed a motion for a new trial on
the issues of induced infringement and damages, which
the court granted on December 29, 2010.
On April 5, 2011, a second trial was held with respect
to indirect infringement and damages. On April 8, 2011,
the jury returned a verdict in favor of Commil on both
issues and this time awarded $63.7 million in damages.
On September 28, 2011, the district court entered an
amended final judgment granting $63.7 million in actual
damages, $10.3 million in prejudgment interest, and
$17,738 in costs. This appeal followed.
II. DISCUSSION
Cisco appeals the district court decision on several
grounds. First, Cisco contends that an erroneous instruc-
tion allowed the jury to find inducement based on mere
negligence. Second, Cisco argues that the district court
COMMIL USA v. CISCO SYSTEMS 5
erroneously precluded Cisco from presenting evidence of
its good-faith belief of invalidity to show that it lacked the
requisite intent to induce infringement of the asserted
claims. Third, Cisco argues that the district court abused
its discretion in granting a new trial and that the district
court violated the Seventh Amendment by granting a new
trial on certain issues, but not others. Fourth, Cisco
claims the court erred in construing the term “short-range
communication protocol.” Fifth, Cisco argues that there is
not substantial evidence to sustain the jury verdict on
infringement. Sixth, Cisco contends the claims are indef-
inite, not enabled, and lacking adequate written descrip-
tion. Finally, Cisco objects to the damages award on the
grounds that Commil’s royalty base violates the entire
market value rule. We take each of these issues in turn.
A. THE JURY INSTRUCTION
Before the district court and on appeal, Cisco chal-
lenged the second trial’s jury instruction on induced
infringement. The district court denied Cisco’s motion for
a new trial on the jury instruction issue. We review the
denial of a motion for a new trial under the law of the
regional circuit. Riverwood Int’l Corp. v. R.A. Jones &
Co., 324 F.3d 1346, 1352 (Fed. Cir. 2003). In the Fifth
Circuit, the denial of a motion for a new trial “will not be
disturbed absent an abuse of discretion or a misapprehen-
sion of the law.” Prytania Park Hotel v. Gen. Star Indem.
Co., 179 F.3d 169, 173 (5th Cir.1999). Whether a jury
instruction on an issue of patent law is erroneous is a
matter of Federal Circuit law that is reviewed de novo.
Sulzer Textil A.G. v. Picanol N.V., 358 F.3d 1356, 1363
(Fed. Cir. 2004) (citing Advanced Display Sys., Inc. v.
Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000)).
We will set aside the jury verdict, “if the movant can
establish that ‘those instructions were legally erroneous,’
and that ‘the errors had prejudicial effect.’” Id. (citations
omitted). In reviewing jury instructions, we review the
trial record and the jury instructions in their entirety. Id.6 COMMIL USA v. CISCO SYSTEMS
At the second trial, the court instructed the jury that
it could find inducement if “Cisco actually intended to
cause the acts that constitute direct infringement and
that Cisco knew or should have known that its actions
would induce actual infringement.” J.A. 6389 (98:24-
99:2). The “knew or should have known” language is a
verbatim recitation of the standard for showing induced
infringement we originally set forth in Manville Sales
Corp. v. Paramount Sys., Inc., 917 F.2d 544, 553 (Fed. Cir.
1990). This court, sitting en banc, again approved this
language in DSU Medical Corp. v. JMS Co., Ltd., 471
F.3d 1293, 1306 (Fed. Cir. 2006) (en banc). Cisco alleges
that this instruction allowed the jury to find inducement
on the showing of mere negligence and, as such, is legally
erroneous in view of the Supreme Court’s recent decision
in Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct.
2060 (2011).
The Global-Tech Court held that induced infringe-
ment “requires knowledge that the induced acts consti-
tute patent infringement.” Id. at 2068. The knowledge
requirement of Global-Tech may be satisfied by showing
actual knowledge or willful blindness. Id. at 2072. In
reaching this conclusion the Court expressly distin-
guished actual knowledge and willful blindness from
recklessness and negligence explaining that:
[A] willfully blind defendant is one who takes de-
liberate actions to avoid confirming a high proba-
bility of wrongdoing and who can almost be said to
have actually known the critical facts. By con-
trast, a reckless defendant is one who merely
knows of a substantial and unjustified risk of such
wrongdoing and a negligent defendant is one who
should have known of a similar risk but, in fact,
did not.
Id. at 2070-71 (citations omitted). The Court acknowl-
edged that the facts that must be adduced to find willful
COMMIL USA v. CISCO SYSTEMS 7
blindness prevent such a finding on facts that support
only recklessness or negligence. Id. Moreover, the Court
rejected the standard set forth by this court, in part,
because it permitted “a finding of knowledge when there
is merely a ‘known risk’ that the induced acts are infring-
ing.” Id. at 2071.
Commil contends that the jury instruction in this case
merely allowed the jury to find knowledge based upon
circumstantial evidence. Circumstantial evidence can, of
course, support a finding of actual knowledge or willful
blindness just as it did in Global-Tech. Id. at 2071-72.
The jury instruction in this case, however, was not so
limited. While the court did instruct the jury that certain
circumstantial evidence could support a finding of in-
ducement, the present jury instruction plainly recites a
negligence standard, which taken literally, would allow
the jury to find the defendant liable based on mere negli-
gence where knowledge is required. J.A. 6389 (98:19-
99:15). Therefore, to the extent our prior case law allowed
the finding of induced infringement based on recklessness
or negligence, such case law is inconsistent with Global-
Tech and no longer good law. It is, therefore, clear that
the jury instruction in this case was erroneous as a mat-
ter of law. This finding, however, does not end our in-
quiry.
In order to set aside a jury verdict, we must find not
only that the jury instruction was legally erroneous, but
also that the instruction had a prejudicial effect. Sulzer
Textil, 358 F.3d at 1364 (“[I]t is not enough to merely
show that a jury instruction is erroneous; [petitioner] also
must show that the erroneous jury instruction was preju-
dicial.”). If the erroneous jury instruction “could not have
changed the result, the erroneous instruction is harm-
less.” Environ Prods., Inc. v. Furon Co., 215 F.3d 1261,
1266–67 (Fed. Cir. 2000). Commil contends that when
viewed as a whole, the jury instruction required the jury
8 COMMIL USA v. CISCO SYSTEMS
to find facts that satisfy the Global-Tech standard and,
therefore, there is no prejudicial effect. We cannot agree.
A finding of inducement requires both knowledge of
the existence of the patent and “knowledge that the
induced acts constitute patent infringement.” Global-
Tech, 131 S. Ct. at 2068; see also DSU Med. Corp., 471
F.3d at 1306 (explaining that an “alleged infringer must
be shown . . . to have knowingly induced infringement,”
not merely knowingly induced the acts that constitute
direct infringement” (citation omitted)). Here, the jury
was clearly instructed that Cisco could not be liable for
induced infringement if it was not aware of the ’395
patent. The jury was also instructed that Cisco must
have actively and knowingly aided and abetted direct
infringement. The jury, however, was not instructed that
in order to be liable for induced infringement, Cisco must
have had knowledge that the induced acts constitute
patent infringement. On the contrary, the jury instruc-
tion allowed Cisco to be held liable if “Cisco knew or
should have known that its actions would induce direct
infringement.” J.A. 6389 (99:10-11). With respect to
whether the induced acts constitute patent infringement,
it is clear that the jury was permitted to find induced
infringement based on mere negligence where knowledge
is required. This erroneous instruction certainly could
have changed the result. Facts sufficient to support a
negligence finding are not necessarily sufficient to sup-
port a finding of knowledge. Accordingly, we vacate the
jury’s verdict on induced infringement and remand for a
new trial. Because we vacate the induced infringement
verdict upon which the damages award is based, we also
vacate the damages award.
B. CISCO’S GOOD-FAITH BELIEF OF INVALIDITY
Cisco further contends that the district court erred in
preventing Cisco from presenting evidence during the
COMMIL USA v. CISCO SYSTEMS 9
second trial of its good-faith belief of invalidity to rebut
Commil’s allegations of induced infringement. We agree.
Prior to the second trial, Cisco proffered evidence to
support its good-faith belief that the ’395 patent is inva-
lid. Commil filed a motion in limine to exclude this evi-
dence, which the district court granted without written
opinion. It is not entirely clear from the record why the
district court precluded Cisco from presenting its evi-
dence. However, during a colloquy with Cisco’s counsel at
a pretrial hearing, the district court appeared to base its
decision on the fact that our precedent indicates that such
evidence is relevant where it relates to a good-faith belief
of non-infringement, but is silent with respect to invalidi-
ty. J.A. 6061-63. It is true, as the district court noted,
that we appear to have not previously determined wheth-
er a good-faith belief of invalidity may negate the requi-
site intent for induced infringement. We now hold that it
may.
Under our case law, it is clear that a good-faith belief
of non-infringement is relevant evidence that tends to
show that an accused inducer lacked the intent required
to be held liable for induced infringement. See DSU Med.
Corp., 471 F.3d at 1307 (finding a demonstrated belief of
non-infringement sufficient to support a jury verdict that
the defendant did not induce infringement); Ecolab, Inc. v.
FMC Corp., 569 F.3d 1335, 1351 amended on reh’g in
part, 366 F. App’x 154 (Fed. Cir. 2009) (finding that a
reasonable belief of non-infringement supported a jury
verdict that the defendant lacked the intent required for
induced infringement); Kinetic Concepts, Inc. v. Blue Sky
Med. Grp., Inc., 554 F.3d 1010, 1025 (Fed. Cir. 2009)
(holding that defendant’s “belief that it can freely practice
inventions found in the public domain” supports “a jury’s
finding that the intent required for induced infringement
was lacking”); Bettcher Indus., Inc. v. Bunzl USA, Inc.,
661 F.3d 629, 649 (Fed. Cir. 2011) (finding opinion of
counsel regarding non-infringement “admissible, at least
10 COMMIL USA v. CISCO SYSTEMS
with respect to [defendant]’s state of mind and its bearing
on indirect infringement”). We see no principled distinc-
tion 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 in-
fringement of a patent.
It is axiomatic that one cannot infringe an invalid pa-
tent. See, e.g., Prima Tek II, L.L.C. v. Polypap, S.A.R.L.,
412 F.3d 1284, 1291 (Fed. Cir. 2005) (“there can be no . . .
induced infringement of invalid patent claims”); Richdel,
Inc. v. Sunspool Corp., 714 F.2d 1573, 1580 (Fed. Cir.
1983) (“The claim being invalid there is nothing to be
infringed.”). Accordingly, one could be aware of a patent
and induce another to perform the steps of the patent
claim, but have a good-faith belief that the patent is not
valid. Under those circumstances, it can hardly be said
that the alleged inducer intended to induce infringement.
Thus, a good-faith belief of invalidity is evidence that may
negate the specific intent to encourage another’s in-
fringement, which is required for induced infringement.
Several district courts have considered this question and
come to the same conclusion. See VNUS Med. Techs., Inc.
v. Diomed Holdings, Inc., 2007 WL 2900532, at * 1 (N.D.
Cal. Oct. 2, 2007) (denying plaintiff’s motion for summary
judgment on induced infringement based, in part, on an
opinion of counsel that the patents-in-suit were invalid”);
Kolmes v. Worm Elastic Corp., 1995 WL 918081, at * 10
(M.D.N.C. Sept. 18, 1995) (finding, after a bench trial, no
intent to induce infringement where defendants “had a
good faith belief in the invalidity” of the patent-in-suit);
DataQuill Ltd. v. High Tech Computer Corp., 2011 WL
6013022, at *10 (S.D. Cal. Dec. 1,2011) (indicating that a
belief of invalidity may present a triable issue of fact as to
intent to induce infringement); see also Lemley, Inducing
Patent Infringement, 39 U.C. Davis. L. Rev. 225,243
(2005) (“[I]t is not reasonable to assume that merely
because a defendant is aware of the existence of a patent,
COMMIL USA v. CISCO SYSTEMS 11
he intended to infringe it. He may believe the patent
invalid”); but see Applera Corp. v. MJ Research Inc., 2004
WL 367616, at *1 (D. Conn. Feb. 24, 2004); LadaTech,
LLC v. Illumina, Inc., 2012 WL 1188266, at *2 (D. Del.
Feb. 14, 2012).
We now hold that evidence of an accused inducer’s
good-faith belief of invalidity may negate the requisite
intent for induced infringement. 1 This is, of course, not to
say that such evidence precludes a finding of induced
infringement. Rather, it is evidence that should be con-
sidered by the fact-finder in determining whether an
accused party knew “that the induced acts constitute
patent infringement.” Global-Tech, 131 S. Ct. at 2068.
C. THE GRANT OF A SECOND TRIAL
Cisco challenges the district court’s grant of a new
trial on two fronts. First, Cisco argues that there was no
basis for granting a new trial. Second, Cisco argues that
even if a new trial was proper, the partial new trial vio-
lated the Seventh Amendment. We discuss these issues
seriatim.
1. THE FIRST TRIAL
The district court proceedings in this case were unu-
sual. Commil is based in Israel and the inventors of the
’395 patent are Israeli. Throughout the trial, according to
1 In dissent, Judge Newman does little more than
construct a straw man and set him ablaze. We certainly
do not hold “that if the inducer of infringement believes in
good faith that the patent is invalid, there can be no
liability for induced infringement.” J. Newman Op.
concurring-in-part, dissenting-in-part 1. Nor do we
“include a belief in patent validity as a criterion of in-
fringement.” Id. at 4.
12 COMMIL USA v. CISCO SYSTEMS
the district court, Cisco’s trial counsel attempted to play
upon religious prejudices and ethnic stereotypes.
For instance, during the cross-examination of Jona-
than David, a co-owner of Commil who is Jewish, Cisco’s
counsel attempted to perpetuate the stereotype of Jewish
people as greedy opportunists by asking Mr. David if his
cousin was a “bottom-feeder who swim[s] around on the
bottom buying people’s houses that they got kicked out of
for next to nothing.” J.A. 5823 (139:19-140:1). Later,
when Mr. David mentioned dining at a local barbeque
restaurant, Cisco’s counsel quipped, “I bet not pork.” J.A.
5825 (146:4-24). Following the pork comment, the court
questioned counsel on the relevance of his statement and
issued a curative instruction stating:
Sometimes when a lawyer injects irrelevant in-
formation into a case it’s because he perceives a
weakness in the merits of his case. I don’t know
whether that’s why it happened in this case, but
you can consider that as you’re evaluating the tes-
timony and the evidence in this case.
J.A. 5838 (2:25-3:9).
Despite the potent curative instruction and the court’s
clear displeasure, in his closing, counsel again made
several irrelevant and prejudicial remarks. Counsel’s
behavior reached a new low when he began his closing
argument with a reference to the trial of Jesus Christ,
stating:
Ladies and Gentlemen of the Jury, you are, in this
case, truth-seekers. You are charged with the
most important job in this courtroom, and that’s
determining the truth. . . . And when you figure
out what the truth is, you’ll know how to answer
that verdict form. You remember the most im-
portant trial in history, which we all read about as
COMMIL USA v. CISCO SYSTEMS 13
kids, in the Bible had that very question from the
judge. What is truth?
J.A. 6038 (16:1-16). 2
After discharging the jury, the court again expressed
displeasure with Cisco’s counsel and informed Commil
that should they file it, a motion for a new trial would be
entertained. Shortly thereafter, Commil filed a motion for
a new trial on the issues of indirect infringement and
damages. In ruling on the motion, the court found that
when counsel’s comments regarding the trial of Jesus
were viewed in context with other comments regarding
Mr. David and the inventors Jewish heritage, it was clear
that counsel was attempting to align his “religious prefer-
ence with that of the jurors and employs an ‘us v. them’
mentality–i.e., ‘we are Christian and they are Jewish.’”
Commil USA, LLC v. Cisco Sys., Inc., No. 2:07-CV-341,
slip op. at 3 (E.D. Tex. Dec. 29, 2010). The court granted
the motion, finding that the comments prejudiced the jury
with respect to indirect infringement and damages. Cisco
filed a motion for reconsideration, which the court denied.
1. GRANT OF A NEW TRIAL
We review issues not unique to patent law, such as
the grant of a new trial based on the prejudicial remarks
of counsel, under regional circuit law. Riverwood Int’l
Corp., 324 F.3d at 1352. The Fifth Circuit reviews rulings
2 Cisco was not alone in its attempt to curry favor
with the jury through the use of religious references. For
instance, during the voir dire, Commil’s counsel explained
that the case began in Israel, “the Holy Land for many
religions.” J.A. 5686 (25:11-13). Later, during closing
argument, Commil’s counsel argued with respect to
damages that Cisco wanted the jurors to “split the baby”
and “[y]ou know, that wasn’t wise at the time of King
Solomon. It’s not wise today.” J.A. 6047 (52:3-9).
14 COMMIL USA v. CISCO SYSTEMS
on new trial motions for abuse of discretion, with more
exacting review applied to orders granting a new trial
than to those denying them. Conway v. Chem. Leaman
Tank Lines, Inc., 610 F.2d 360, 362-363 (5th Cir. 1980).
“[A] new trial will not be granted, even if counsel’s re-
marks are improper, unless after considering the record
as a whole the court concludes that manifest injustice
would result from letting the verdict stand.” Gautreaux v.
Scurlock Marine, Inc., 84 F.3d 776, 783 (5th Cir. 1996).
This is particularly the case where, as here, the state-
ments drew no objection from the opposing party:
“[I]mproper argument may be the basis for a new trial
where no objection has been raised only ‘where the inter-
est of substantial justice is at stake.’” Hall v. Freese, 735
F.2d 956, 961 (5th Cir. 1984) (quoting Edwards v. Sears,
Roebuck & Co., 512 F.2d 276, 286 (5th Cir. 1975)).
As discussed supra, the district court granted a new
trial based on what it viewed as the prejudicial effect of
inflammatory statements made by Cisco’s counsel during
trial. Cisco claims that the statements do not warrant a
new trial. Cisco asks us to review the cold record—
substituting our judgment for the district court’s—and
find that there was no manifest injustice in this case. We
decline.
In reviewing the district court’s ruling, it is clear that
the court did not abuse its discretion. There is ample
evidence from which the district court could conclude that
the jury was biased by Cisco’s actions. Throughout trial,
Cisco attempted to instill in the jury, through irrelevant
references to ethnicity and religion, an “us versus them”
mentality. Cisco persisted in its course of conduct even
after the court warned counsel and issued a curative
instruction. And, in a case involving Jewish inventors
and plaintiffs, Cisco’s counsel began his closing argument
with a reference to the trial of Jesus Christ.
COMMIL USA v. CISCO SYSTEMS 15
Even if we were inclined to agree with Cisco that
there is no manifest injustice in this case—and we are
not—we refuse to substitute our judgment for that of a
district court whose “on-the-scene assessment of the
prejudicial effect, if any, carries considerable weight.”
United States v. Munoz, 150 F.3d 401, 415 (5th Cir. 1998).
Accordingly, we find that the district court did not abuse
its discretion in granting a new trial.
2. PARTIAL NEW TRIAL
The Federal Rules of Civil Procedure allow the courts
to grant partial new trials so long as the issues are “dis-
tinct and separable.” Fed. R. Civ. P. 59. A court’s authority
to grant a partial new trial is likewise constrained by the
Seventh Amendment. Gasoline Prod. Co. v. Champlin
Refining Co., 283 U.S. 494, 500 (1931). “Where the prac-
tice permits a partial new trial, it may not properly be
resorted to unless it clearly appears that the issue to be
retried is so distinct and separable from the others that a
trial of it alone may be had without injustice.” Id. A
partial new trial should not be granted where the issues
to be retried are “so interwoven” with other issues in the
case “that the former cannot be submitted to the jury
independently of the latter without confusion and uncer-
tainty.” Id. We have explained, however, that the Sev-
enth Amendment “prohibition is not against having two
juries review the same evidence, but rather against hav-
ing two juries decide the same essential issues.” In re
Innotron Diagnostics, 800 F.2d 1077, 1086 (Fed. Cir.
1986) (citation omitted). Trying issues separately is
appropriate where “separate trials would not constitute a
‘clear and indisputable’ infringement of the constitutional
right to a fair trial. Id. (citing Bankers Life & Casualty
Co. v. Holland, 346 U.S. 379, 384 (1953).
Cisco contends that the district court violated the
Seventh Amendment by granting a new trial on the issues
of induced infringement and damages, but not direct
16 COMMIL USA v. CISCO SYSTEMS
infringement and validity. Specifically, Cisco contends,
under the circumstances of this case, indirect infringe-
ment is not distinct and separable from validity, but
rather, they are inextricably intertwined. Cisco argues
that where the plaintiff alleges induced infringement and
the defendant has evidence of a good-faith belief of inva-
lidity, the issues of validity and induced infringement are
not distinct and separable. We disagree.
We note at the outset that “patent infringement and
invalidity are separate and distinct issues.” Pandrol
USA, LP v. Airboss Ry. Prod., Inc., 320 F.3d 1354, 1364-
65 (Fed. Cir. 2003). Indeed, this court routinely orders a
partial new trial on infringement, while upholding an
earlier verdict on validity. See, e.g., Cardiac Pacemakers,
Inc. v. St. Jude Med., Inc., 381 F.3d 1371, 1374 (Fed. Cir.
2004); Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1354-
55 (Fed. Cir. 2010).
We previously rejected the “argument that, under the
Seventh Amendment, a new trial on willfulness would
require a new trial on infringement.” Voda v. Cordis
Corp., 536 F.3d 1311, 1329 (Fed. Cir. 2008). In order to
prove that infringement was willful, a plaintiff must show
both that “an infringer acted despite an objectively high
likelihood that its actions constituted infringement of a
valid patent” and that the “objectively-defined risk (de-
termined by the record developed in the infringement
proceeding) was either known or so obvious that it should
have been known to the accused infringer.” In re Seagate
Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007). “[T]he
objective prong of Seagate tends not to be met where an
accused infringer relies on a reasonable defense to a
charge of infringement. Thus, the question on appeal
often posed is whether a defense or non-infringement
theory was reasonable.” Bard Peripheral Vascular, Inc. v.
W.L. Gore & Assocs., Inc., 682 F.3d 1003, 1005-06 (Fed.
Cir. 2012) cert. denied, 133 S. Ct. 932 (2013). In such a
case, in order to find that infringement was not willful,
COMMIL USA v. CISCO SYSTEMS 17
the defendant’s non-infringement theory must be reason-
able. The question of a non-infringement theory’s reason-
ableness often requires looking at the merits of non-
infringement. Yet, a new trial on willfulness does not
require a new trial on infringement. See Voda, 536 F.3d
at 1329. We believe the situation in the present case to be
analogous.
We acknowledge that the current case presents a
unique situation where a jury considering induced in-
fringement, but not validity, may be asked to consider
evidence of invalidity in order to decide whether Cisco
possessed a good-faith belief of invalidity. Nonetheless,
the fact that a second jury will consider evidence of inva-
lidity that supports Cisco’s position on the good-faith
belief issue does not compel the conclusion that the second
jury will decide the ultimate issue of invalidity. Indeed,
the issue of whether Cisco possessed a good-faith belief of
invalidity is distinct and separate from the issue of
whether the patent claims are invalid. In order to deter-
mine that Cisco had a good-faith belief of invalidity, the
jury must merely decide whether Cisco possessed that
belief in good-faith. The jury need not decide whether the
underlying position was meritorious. Thus, although the
two juries will review the same evidence of invalidity,
they will not decide the same essential issues. Therefore,
we cannot say that separate trials on invalidity and
induced infringement would constitute a clear and indis-
putable infringement of the constitutional right to a fair
trial. Accordingly, we find that holding separate trials on
the issues of invalidity and induced infringement does not
violate the Seventh Amendment.
D. CLAIM CONSTRUCTION AND THE MERITS
Cisco challenges the district court’s construction of the
term “short-range communication protocol.” The court
construed this term to mean “a set of procedures required
to initiate and maintain short-range communication
18 COMMIL USA v. CISCO SYSTEMS
between two or more devices.” Commil USA, LLC v. Cisco
Sys., Inc., 2:07-CV-341, slip op. at 1 (E.D. Tex. Nov. 6,
2009). Cisco’s argument is without merit. Cisco does not
contend that a “short-range communication protocol” is
not “a set of procedures required to initiate and maintain
short-range communication between two or more devices.”
Rather, Cisco asks this court, as it did the district court,
to limit the term to only those specific short-range com-
munication protocols listed in the patent. We decline. See
Phillips v. AWH Corp., 415 F.3d 1303, 1323-24 (Fed. Cir.
2005) (cautioning against importing limitations from the
specification into the claims).
Cisco also appeals the district court’s findings regard-
ing validity, infringement, and damages. Cisco argues
that the claims are invalid for reasons of indefiniteness,
non-enablement, and lack of written description. We find
these contentions without merit. Because we remand for
a new trial, we do not reach the issues of infringement
and damages. Rather, we leave them to be decided by the
district court in first instance.
AFFIRM-IN-PART, VACATE-IN-PART, AND
REMAND
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, concurring in part, dissenting in
part.
I agree that remand is appropriate, and I agree that
in this case a partial retrial was within the district court’s
discretion.
However, I respectfully dissent from the change of law
set forth in Part II.B of the court’s opinion. The court
holds that if the inducer of infringement believes in good
faith that the patent is invalid, there can be no liability
for induced infringement, although the patent is held
valid. The opinion makes clear that the court intends to
adjust the law, as in statements including:
2 COMMIL USA v. CISCO SYSTEMS
We now hold that evidence of an accused inducer’s
good-faith belief of invalidity may negate the req-
uisite intent for induced infringement. . .
Maj. op. at 11 (emphasis added). This change in the law
of induced infringement is inappropriate.
A good-faith belief of patent invalidity may be raised
as a defense to willfulness of the infringement, but it is
not a defense to the fact of infringement. Patent invalidi-
ty, if proved, eliminates an invalid patent and thus is a
total defense to infringement. However, a “good-faith
belief” in invalidity does not avoid liability for infringe-
ment when the patent is valid. 1 No rule eliminates in-
fringement of a valid patent, whether the infringement is
direct or indirect.
The “inducement” statute, 35 U.S.C. §271(b), serves a
different purpose. The inducement statute is designed to
allow remedy against an entity that provides an infring-
ing product or method to direct infringers, but is not itself
a direct infringer. The inducement statute does not
import a validity criterion, or a “good faith belief” about
validity, into proof of the act of infringement. See Akamai
Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301,
1308 n.1 (Fed. Cir. 2012) (en banc) (“Because liability for
inducement, unlike liability for direct infringement,
requires specific intent to cause infringement, using
inducement to reach joint infringement does not present
the risk of extending liability to persons who may be
1 The Prima Tek and Richdel cases cited in the
court’s opinion do not state otherwise. See Prima Tek II,
L.L.C. v. Polypap, S.A.R.L., 412 F.3d 1284, 1285 (Fed. Cir.
2005) (declining as “moot” to address liability for in-
fringement of an invalid patent); Richdel, Inc. v. Sun-
spool Corp., 714 F.2d 1573, 1580 (Fed. Cir. 1983) (same).
COMMIL USA v. CISCO SYSTEMS 3
unaware of the existence of a patent or even unaware that
others are practicing some of the steps claimed in the
patent.”).
The majority’s view that a belief in invalidity can ne-
gate infringement is contrary to the principles of tort
liability, codified in the inducement statute. Liability for
induced infringement is akin to “liability . . . under a
theory of joint tortfeasance, wherein one who intentional-
ly caused, or aided and abetted, the commission of a tort
by another was jointly and severally liable with the
primary tortfeasor.” Hewlett-Packard Co. v. Bausch &
Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990); see also
Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060,
2067 (2011) (recognizing that §271(b) codified pre-1952
case law, wherein induced infringement “was treated as
evidence of ‘contributory infringement,’ that is, the aiding
and abetting of direct infringement by another party”);
H.R. Rep. No. 82–1923, at 9 (1952) (explaining that the
new subsection (b) “recites in broad terms that one who
aids and abets an infringement is likewise an infringer.”).
A mistake of law, even if made in good faith, does not
absolve a tortfeasor. “Our law is . . . no stranger to the
possibility that an act may be ‘intentional’ for purposes of
civil liability, even if the actor lacked actual knowledge
that her conduct violated the law.” Jerman v. Carlisle,
McNellie, Rini, Kramer & Ulrich LPA, 130 S. Ct. 1605,
1612 (2010). “If one intentionally interferes with the
interests of others, he is often subject to liability notwith-
standing the invasion was made under an erroneous
belief as to some legal matter that would have justified
the conduct.” Id. (quoting W. Keeton, D. Dobbs, R. Keeton
& D. Owen, Prosser and Keeton on Law of Torts 110 (5th
ed. 1984)). A trespass “can be committed despite the
actor’s mistaken belief that she has a legal right to enter
the property.” Id. (citing Restatement (Second) of Torts
§164, & cmt. e (1963–1964)). “[P]atent validity is a ques-
tion of law,” CSIRO v. Buffalo Technology (USA), Inc., 542
4 COMMIL USA v. CISCO SYSTEMS
F.3d 1363, 1375 (Fed. Cir. 2008), and an “erroneous
belief” of the “legal matter” of validity does not excuse the
violation. Jerman, 130 S. Ct. at 1612.
A defendant’s ultimate liability for induced infringe-
ment, as for direct infringement, is subject to various
defenses including patent invalidity and unenforceability.
However, whether there is infringement in fact does not
depend on the belief of the accused infringer that it might
succeed in invalidating the patent. Such a belief, even if
held in good faith, does not negate infringement of a valid
and enforceable patent. This rule applies, whether the
infringement is direct or indirect. My colleagues err in
holding that “evidence of an accused inducer’s good-faith
belief of invalidity may negate the requisite intent for
induced infringement.” Maj. op. at 11.
The Court stated in Global-Tech that “induced in-
fringement under section 271(b) requires knowledge that
the induced acts constitute patent infringement.” 131 S.
Ct. at 2068. The Court did not include a belief in patent
validity as a criterion of infringement. Global-Tech does
not hold that if the inducer “believed” that the patent is
invalid, the inducer avoids infringement when, as here,
validity is sustained.
Validity of the Commil patent was sustained by the
jury, sustained by the district court, and sustained by this
court. Whatever Cisco’s “belief” as to invalidity of the
patent, this belief is irrelevant to the fact and law of
infringement. A belief of invalidity cannot avoid liability
for infringement of a patent whose validity is sustained.
The panel majority’s contrary holding is devoid of support
in law and precedent.
The district court applied the correct law, and ex-
cluded the issue of validity from its retrial of the issue of
infringement. My colleagues now hold that although
validity was found and sustained at trial, “the district
court erred in preventing Cisco from presenting evidence
COMMIL USA v. CISCO SYSTEMS 5
during the second trial of its good-faith belief in invalidity
to rebut Commil’s allegations of induced infringement.”
Maj. op. at 8–9. The court mis-cites the Global-Tech
ruling concerning the inducer’s knowledge “that the
induced acts constitute patent infringement,” maj. op. at
11, for Global-Tech relates to knowledge of infringement,
not knowledge of validity.
The fact of infringement does not depend on whether
the inducer’s view of patent validity is held in good faith
or bad faith. Validity and infringement are distinct
issues, bearing different burdens, different presumptions,
and different evidence. Although the court now acknowl-
edges that “patent infringement and invalidity are sepa-
rate and distinct issues,” maj. op. at 16, the court holds
that on this third infringement trial the jury “may be
asked to consider evidence of invalidity.” Maj. op. at 17.
If the jury is required to consider evidence of invalidity, as
the court holds, it strains fairness to deny Cisco’s request
for redetermination of the issue of validity.
I respectfully dissent from the court’s incorrect state-
ment of the law of induced infringement, and from the
holding that a showing of a good faith belief in patent
invalidity can avoid all liability for induced infringement
of a valid patent.
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.
______________________
O’MALLEY, Circuit Judge, concurring in part and dissent-
ing in part.
I agree in large measure with the majority’s thought-
ful opinion in this case. First, I agree that the induced
infringement judgment and award must be vacated. Like
Judge Prost, I believe this is so both because the trial
court instructed the jury to apply an incorrect legal
standard during its deliberations and because the court
erred in excluding evidence regarding Cisco’s alleged good
faith belief in the invalidity of the asserted claims of the
’395 patent. On the latter point, I agree that an accused
inducer’s good faith belief of invalidity of a patent claim is
relevant to its intent to induce infringement of that claim
and is, thus, admissible for that purpose.
2 COMMIL USA v. CISCO SYSTEMS
I also agree that Cisco’s objections to the trial court’s
construction of the claim term “short range communica-
tion protocol” are not well taken. Contrary to Cisco’s
contentions, the ’395 patent’s written description does not
limit the short-range communication protocol to Bluetooth
and related protocols. Instead, the patent consistently
refers to such protocols as exemplary. See, e.g., ’395
patent at col. 18, ll. 23–24 (“Bluetooth wireless technology
is an example of such a short-range communication
protocol.”); col. 8, ll. 41–46. We have expressly stated that
we do not limit the scope of the claims to the preferred
embodiment described in the written description. See
Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir.
2005) (“[W]e have expressly rejected the contention that if
a patent describes a single embodiment, the claims of the
patent must be construed as being limited to that embod-
iment.”).
Finally, I agree that the trial judge acted within his
discretion in granting a new trial following the first trial
involving these parties and these patent claims. Cisco
does not deny that its local counsel’s conduct was repre-
hensible, nor does it debate whether some curative action
was appropriate. Cisco simply asks that we substitute
our judgment for that of the trial court with respect to
whether that curative action should have been a new
trial. I agree with the majority that it is appropriate to
defer to the trial court’s first-hand assessment of whether
counsel’s conduct was sufficiently improper as to call into
question the integrity of the jury’s verdict. Accordingly,
while it may be true that a different jurist might have
refused to set aside the jury’s verdict in these circum-
stances, the decision to do so here should not be reversed. 1
1 Where, as here, counsel for both parties made im-
proper comments during the trial, the trial court’s cura-
tive instructions were—as the majority describes it—quite
COMMIL USA v. CISCO SYSTEMS 3
Having set out those places where I agree with the
majority’s resolution of this appeal, I turn to the two
decisions over which I must part company with my col-
leagues. First, I cannot endorse the majority’s refusal to
address Cisco’s potentially dispositive arguments regard-
ing whether Commil did or ever could prove the third-
party direct infringement which is a necessary predicate
to Commil’s induced infringement claim. Next, I disagree
with the majority’s conclusion that the trial court’s deci-
sion to order only a partial retrial of the issues presented
is defensible; I believe the partial retrial order deprived
Cisco of its right to a jury trial as guaranteed by the
Seventh Amendment to the United States Constitution
and must be reversed. I believe, therefore, that we should
not address the strength of Cisco’s validity arguments
based on the record from the first trial and should leave
those questions to the third jury to visit this matter.
I address these disagreements in turn.
I
Cisco argues that the trial court erred in denying its
request for judgment as a matter of law on Commil’s
induced infringement claim because Commil failed to
prove—and allegedly cannot prove—that any third-party
practices all of the steps of the method claimed in claim 1
of the ’395 patent. Specifically, Cisco asserts that its
customers do not perform (1) the step of “dividing” the
communications protocol into two smaller protocols or, (2)
the step of “running an instance” of the low-level protocol
at the base station and “running an instance” of the high-
level protocol at the switch. Cisco asserts that only it—
“potent,” and Commil did not ask for a new trial until
invited to do so by the trial court, it also would have been
well within the bounds of the trial court’s discretion to not
order a retrial. On this record, either conclusion would be
defensible.
4 COMMIL USA v. CISCO SYSTEMS
and not its customers—practices the “dividing” step
because the WiFi protocol is divided into high- and low-
level protocols at the factory when the products are creat-
ed. Because of this, Cisco asserts that its customers
cannot perform this step and, thus, do not directly in-
fringe claim 1. With respect to the “running an instance
step,” Cisco asserts that, in its WiFi system, the access
points run only a single copy of the protocol that com-
municates with all of the connected devices, and do not
run separate copies of the low-level protocols with respect
to each mobile unit or device to which the access point is
connected. If one or both of these steps of the claimed
method are not, in fact, practiced by its customers, Cisco
is correct that Commil’s claims of induced infringement—
predicated as they are on claims of single party direct
infringement—must fail. 2
On appeal, Cisco asks that we reverse the trial court’s
denial of its motion for judgment as a matter of law on
these grounds and enter judgment in its favor. It con-
tends that we need not reach the propriety of the trial
court’s inducement instructions or evidentiary rulings, or
the need for a new trial based on errors therein, because
Commil failed to prove the direct infringement predicate
for its induced infringement claim. Cisco contends that
these questions are dispositive of the induced infringe-
ment claims and that the need for a new trial could be
obviated by their resolution.
2 Cisco correctly points out that Commil never as-
serted a divided infringement theory, that the parties
jointly asked the court to omit any divided infringement
discussion from its instructions to the jury, and that the
jury was instructed, without objection, that it could find
induced infringement by Cisco only if it first found that “a
single party performs each and every step of the claimed
method.”
COMMIL USA v. CISCO SYSTEMS 5
Whatever the merits of Cisco’s argument regarding
the direct infringement aspect of Commil’s induced in-
fringement claim, Cisco is correct that it is within the
scope of our authority on this record to resolve them now.
Indeed, I believe it is our obligation to do so. If we send
this matter back for a new trial on induced infringement
without resolving these issues, we likely will see the case
return in much the same posture. If a new panel ulti-
mately concludes Cisco is correct as to either one of the
required steps of claim 1—and that no finding of induced
infringement can stand on that ground—we will have
forced the parties and the trial court to go through a new
trial when none was necessary.
I do not purport to prejudge Cisco’s arguments; Cisco
may be wrong on both points. 3 I urge us, however, to
judge them one way or another. We do no one any favors
by kicking these potentially dispositive cans down the
road and may well be requiring undue expense and wast-
ing scarce judicial resources in the process. I believe our
appellate function requires that we avoid such inefficiency
whenever possible. For these reasons, I dissent from the
majority’s refusal to resolve these properly preserved
issues on appeal.
II
I turn next to the majority’s conclusion that the par-
tial new trial order entered by the district court in this
case—one which we now effectively reinstate—did not
violate the Seventh Amendment. I do not agree. Accept-
ing the proposition, as I have, that the district court acted
within its discretion to find a new trial warranted in this
3 While I, of course, have formulated positions on
these questions, because the majority insists that the next
panel of this court to visit this case be relegated to resolv-
ing them, I will not say anything which might impact its
independent ability to do so.
6 COMMIL USA v. CISCO SYSTEMS
case, I believe that nothing other than a full retrial on all
issues can be justified under the law. 4
While partial retrials are permissible in appropriate
circumstances, the Supreme Court has set forth a strict
standard for determining when such circumstances exist.
In Gasoline Prods. Co. v. Champlin Refining Co., 283 U.S.
494, 500 (1931), the Supreme Court explained that a
court’s authority to order a new trial is constrained by the
Seventh Amendment such that “a partial new trial . . .
may not properly be resorted to unless it clearly appears
that the issue to be retried is so distinct and separable
from the others that a trial of it alone may be had without
injustice.” Applying that standard to the case before it,
the Supreme Court concluded that a partial retrial on
damages alone would violate the Seventh Amendment
because the facts and issues relating to the merits of the
contract action were not sufficiently separable from those
relating to damages. Gasoline Prods., 283 U.S. at 500; see
also Witco Chemical Corp. v. Peachtree Doors, Inc., 787
F.2d 1545, 1549 (Fed. Cir. 1986) (quoting standard from
Gasoline Products and finding that “it is inappropriate . . .
to have one jury return a verdict on the validity, enforcea-
bility, and contract questions while leaving the infringe-
ment questions to a second jury.”).
The Fifth Circuit—the regional circuit from which
this case arises and whose law we are to apply to this
non-patent basic right—repeatedly has cautioned against
resort to partial retrials, citing to the guidance from
4 Because it appears that Commil has abandoned
its direct infringement claims against Cisco, the other
issues I believe need to be tried in conjunction with Com-
mil’s induced infringement claim include only those
relating to the alleged invalidity of the claims of the ’395
patent—indefiniteness, lack of enablement, and lack of
adequate written description.
COMMIL USA v. CISCO SYSTEMS 7
Gasoline Products. See, e.g., Nissho-Iwai Co. v. Occi-
dental Crude Sales, Inc., 729 F.2d 1530, 1539 (5th Cir.
1984) (approving refusal to order partial retrial of fraud
claim alone because “the fraud claim arose out of the acts
surrounding the breach of contract [claim]” and under-
standing of one required understanding of the other);
Davis v. Safeway Stores, 532 F.2d 489, 491 n. 3 (5th Cir.
1976) (noting that granting of a partial new trial over
particular issues requires those issues to be clearly sepa-
rable from other issues in the case); Vidrine v. Kansas
City S. Ry. Co., 466 F.2d 1217, 1221 (5th Cir. 1972) (ob-
serving that a partial retrial is only appropriate where
issues are “so distinct and separable” that there will be
“no injustice or prejudice” to either party); Williams v.
Slade, 431 F.2d 605, 609–10 (5th Cir. 1970) (noting that if
a verdict is a “product of passion or prejudice” a new trial
on all issues must be ordered).
The requirement that issues in multiple trials be sep-
arable and distinct protects parties’ rights under the
Seventh Amendment by guarding against circumstances
which threaten those rights. See, e.g., Pryer v. C.O. 3
Slavic, 251 F.3d 448, 454-58 (3d Cir. 2001) (collecting
cases disapproving of partial retrials and outlining factors
counseling against such partial retrials). One such cir-
cumstance is where the issues relating to the separated
claims overlap, causing the potential for “confusion” or
“uncertainty” when one issue is submitted to the jury
without the other. Id.; See also, Nissho-Iwai Co., 729 F.2d
at 1539 (where claims arise from same transactional
facts, jury cannot understand one fully without under-
standing the other and having both presented jointly);
FIGA v. R.V.M.P. Corp., 874 F.2d 1528, 1534 (11th Cir.
1989) (partial retrial just on damages is not appropriate
where damages evidence was not fully separable from
evidence of insured’s alleged intent to cause fire); United
States ex rel. Miller v. Bill Harbert Int’l Constr., Inc., 865
F. Supp. 2d 1, 10 (D.D.C. 2011) (partial retrial inappro-
8 COMMIL USA v. CISCO SYSTEMS
priate because jury needs thorough knowledge of underly-
ing conspiracy in order to understand and assess whether
particular defendants joined that conspiracy).
Partial retrials must also be avoided where it is possi-
ble that the very error that is deemed to warrant a new
trial may have impacted the jury’s determination of other
issues. Pryer, 251 F.3d at 455 (3d Cir. 2001) (partial
retrial is inappropriate whenever it is not clear that the
error that crept into one element of the verdict “did not in
any way affect the determination of any other”) (addition-
al citations omitted). This is especially so where a retrial
is prompted by a finding that comments of counsel may
have unduly “inflamed” the jury because such a finding
“implies that the jury made its decision on an improper
basis.” United States ex rel. Miller, 865 F. Supp. 2d at 10
(D.D.C. 2011) (finding partial retrial inappropriate where
new trial was based on prosecutor’s improper comments
on one issue because that error “might well have affected
the jury’s determination of other issues”). And, partial
retrials should be avoided whenever circumstances indi-
cate “there is reason to think that the verdict may repre-
sent a compromise among jurors with different views on
whether defendant was liable.” Pryer, 251 F.3d at 455(additional citations omitted); See also Stanton v. Astra
Pharm. Products, Inc., 718 F.2d 553, 576 (3d Cir. Pa.
1983) (citing Vizzini v. Ford Motor Co., 569 F.2d 754, 759–
60 (3d Cir. Pa. 1977)) (finding that suggestion of possible
compromise verdict was such that permitting retrial of
damages alone, absent reconsideration of liability issues
was inappropriate, noting “[i]s difficult to say that ‘allow-
ing a second jury to determine the issue of damages in
isolation from the whole of the circumstances surrounding
the case was not an injustice. . .’”). All of these circum-
stances are presented here.
As the majority explained, the trial court ordered a
retrial based on statements by Cisco’s local counsel which
the trial court believed were so insidious as to call into
COMMIL USA v. CISCO SYSTEMS 9
question the integrity of the jury’s verdict. See Commil
USA, LLC v. Cisco Sys., Inc., No. 2:07-cv-341 slip. op. at
3–4 (E.D. Tex. Dec. 29, 2010). If the trial court believed
the verdict truly was compromised, how could he—and
how can we—assume the misconduct infected only a
portion of their deliberations? Indeed, it could be that the
jury was so incensed by its counsel’s conduct that they
held it against Cisco by refusing to invalidate Commil’s
patent, despite a contrary view of the evidence.
Once the partial retrial began, moreover, the trial
court’s evidentiary rulings themselves reflect the awk-
ward posture in which he had placed the case. Most
pointedly, as the majority discusses, the trial court ex-
cluded—incorrectly—evidence of Cisco’s alleged good faith
belief in the invalidity of the claims of the ’395 patent.
What the majority fails to mention, however, is that
Commil itself expressly argued that it would unduly
confuse the jury to admit such evidence without also
submitting the validity determination to it to decide. See
Commil USA, LLC v. Cisco Sys., Inc., No. 2:07-cv-341,
Doc. No. 398 at 4–5 (April 1, 2011). And, it was in re-
sponse to this argument that the evidence was excluded.
Where the court closest to these matters saw the potential
for confusion because of the interwoven nature of the
invalidity claims and Cisco’s good faith defense to induced
infringement, how can we ignore that potential when we
now order the excluded evidence to be admitted? I do not
believe we can. I do not believe we can differentiate the
circumstances here from the overlapping nature of the
issues in Gasoline Products and the host of cases cited
above finding a partial retrial improper based on the
principles described therein.
The practical implications of the judgment we render
today highlight the Seventh Amendment problems we
create thereby. We unanimously agree not only that it
was error to exclude proffered evidence of Cisco’s good
faith belief in the invalidity of the claims of the ’395
10 COMMIL USA v. CISCO SYSTEMS
patent, but that the error was not harmless. In other
words, we find that Cisco was denied the right to a fair
trial on Commil’s induced infringement claim because it
was denied the opportunity to pursue a valid defense. In
the same breath, however, the majority concludes it is
appropriate to retry the case in a posture that would
dilute that defense.
When this case returns to Texas for a third trial, the
trial court will need to craft instructions that tell the jury
that, while Cisco claims it had a good faith belief in the
invalidity of the claims of the ’395 patent, Cisco was
wrong. The jury will need to be told that it is not permit-
ted to conclude it agrees with Cisco’s belief. The jury will,
thus, begin its deliberations already suspect about Cisco’s
beliefs and the good faith nature of the same. It is pre-
cisely these circumstances against which the Supreme
Court insists we guard. Importantly, given the signifi-
cance of the Seventh Amendment guarantees it is our job
to protect, we are not to ask whether it is conceivable that
a jury could fairly assess Cisco’s case in these circum-
stances; we are to assume that, where it is not clear that
“the issue to be retried is so distinct and separable from
the others,” it cannot. See, e.g., Gasoline Prods. Co., 283
U.S. at 500; Witco Chemical Corp., 787 F.2d at 1549
Finally, I do not believe we can discount the possibil-
ity that the first verdict may have represented a series of
compromises by the jury. How can we know that the jury
did not agree not to invalidate the claims of the ’395
patent only because it found no induced infringement and
understood that its direct infringement finding carried
with it a smaller damages award? We cannot.
I do not contend that issues in patent cases can never
be tried to separate juries, particularly after an appeal
reveals that only one issue was adjudicated erroneously.
Whether and when a new trial on all issues is required
must be determined “only after considering the totality of
COMMIL USA v. CISCO SYSTEMS 11
the circumstances and by answering: ‘How may the ends
of justice be served?’” Witco Chemical Corp., 787 F.2d at
1549 (citations omitted). Here, all circumstances indicate
that a partial retrial of Commil’s induced infringement
claim without retrial of the validity issues is not appro-
priate. 5
While Cisco’s counsel’s conduct was reprehensible and
warranted curative action, action which compromises
Cisco’s Seventh Amendment right to a jury goes too far. I
believe the trial court abused its discretion by only order-
ing a partial retrial of the claims asserted in this case and
that we perpetuate that error by ordering yet another
partial retrial.
5 The cases upon which the majority relies do not
really support its contrary conclusion. Those cases either
fail to address the constitutional issue at all or do so in
fundamentally different circumstances. I am not per-
suaded they either control or even counsel in in favor of
the conclusion the majority reaches.