In https://patentlyo.com/patent/2022/03/infringers-penalties-violating.html, Dennis seems to argue that actions that are determined to infringe a patent, followed after that fact by the patent being found invalid, moots liability and disobedience by the infringer to intervening judicial orders. Concluding:
"The prospective/retrospective considerations here point toward a philosophical question of whether an invalidity decision is should be seen as an action cancelling a patent or instead is merely revealing that the patent has always been invalid. The consent order in this case agreement particularly states that DBN won’t import products “that infringe claims 1, 2, 5, 10–12, and 34 of the ’380 Patent.” One argument here is that the proper interpretation of “infringe” assumes patent validity. Once we figured out that the patent is invalid, doesn’t that mean that it was always invalid?"
35 USC 271(a) reads "(a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent."
35 USC 282(b) reads "(b) Defenses.—The following shall be defenses in any action involving the validity or infringement of a patent and shall be pleaded:
(1) Noninfringement, absence of liability for infringement or unenforceability.
(2) Invalidity of the patent or any claim in suit on any ground specified in part II as a condition for patentability.
(3) Invalidity of the patent or any claim in suit for failure to comply with—
(A) any requirement of section 112, except that the failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable; or
(B)any requirement of section 251.
(4)Any other fact or act made a defense by this title."
35 USC 271(a) defines a patented invention, not a valid patented invention. Therefore a plain reading of 271(a) does not exclude from an infringement a patent (claim) that is invalid.
35 USC 282(b) is a defense in an action. Action implies some relation to timing of events. For example during the civil action up until the proceeding is terminated. Perhaps extend by the fraud exception to the record rule, cf., Home Products v. U.S., 2010-1184, 633 F.3d 1369 (Fed. Cir. 2011).
I welcome your views.
Best regards, Rick Neifeld, Ph.D., Patent Attorney
Neifeld IP Law PLLC
9112 Shearman Street, Fairfax VA 22032-1479, United States
I believe there is a federal circuit case that supports your view.
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I cannot recall the case name, but I believe it says that infringement and validity are separate questions, so that you can infringe a patent regardless of validity.
Commil USA, LLC v. Cisco Systems, Inc., (2015).