The Federal Circuit addressed this case following vacatur and remand from the Supreme Court for further consideration in light of Commil v. Cisco.  The issue for the Federal Circuit on remand was whether NuVasive had proven that Medtronic Sofamar Danek (MSD) induced infringement of NuVasive’s patent.  At trial, the jury found both that users of MSD’s device had directly infringed NuVasive’s patent and that MSD induced this infringement.  Thus, the issue for the court was whether there was substantial evidence for the jury to conclude that MSD induced infringement of NuVasive’s patent, i.e., that MSD knew (or was willfully blind to the fact) that it was instructing doctors to infringe NuVasive’s patent. 

The Federal Circuit found that there was substantial evidence that MSD’s infringement position was objectively unreasonable, and based on this evidence, the jury could reasonably have concluded that MSD had knowledge (or was willfully blind to the fact) that it was infringing.  MSD contended that it did not infringe because it “reasonably construed narrowly” the “stopping” limitation of the claims to require a complete termination of emission of any and all electrical pulses.  The claims, however, only require that “said stimulus signal” be stopped, not that any and all electrical signals be stopped, which is what MSD had previously argued.  Thus, MSD’s current theory, cessation of all signals, is inconsistent with the claims and its prior theory, that only the stimulus signal is stopped.  To the extent that MSD was seeking to re-argue claim construction, the court held that this was improper. 

The court further found that, upon receiving a nerve response, MSD’s accused device emitted a signal at a lower intensity.  In other words, the MSD device ceased the stimulus signal after receiving a response, exactly as claimed.  Thus, a reasonable jury could have concluded that MSD knew that its device stopped the stimulus signal after the response is detected, and therefore also concluded that MSD’s non-infringement position was objectively unreasonable and therefore that its device meets the limitations of the claims.  Thus, substantial evidence existed for the jury to have inferred that MSD must have known, or was willfully blind to the fact, that doctors using the device infringe the claims. 

In response to Judge Reyna’s concurrence, the majority rejected the argument that its opinion could be read to suggest that any time that a defendant’s products are found to directly infringe, plaintiff has established the defendant’s intent to induce infringement.  Instead, to show the intent to induce infringement, “it is sufficient that the plaintiff establish that a defendant’s asserted belief in non-infringement was unreasonable.” 

Warsaw Orthopedic, Inc. v. NuVasive, Inc., Case Nos. 2013-1576, -1577 (June 3, 2016); Opinion by: Dyk, joined by Lourie, concurring opinion by Reyna; Appealed From: United States District Court for the Southern District of California, Bencivengo, J.  Read the full opinion here.

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