By: Audrey Millemann
In Warsaw Orthopedic, Inc. v. NuVasive, Inc. (June 3, 2016) 2016 U.S. App. LEXIS 10092, the Federal Circuit Court of Appeals broadly interpreted the Supreme Court’s test for induced infringement, finding irrelevant the defendant’s belief that there was no infringement.
Warsaw and a related company, Medtronic, sued NuVasive for patent infringement. NuVasive counterclaimed against Warsaw and Medtronic for infringement of its patent. NuVasive’s patent covered methods used during surgery to detect a nerve and determine the distance to the nerve. NuVasive alleged that Medtronic manufactured a device that surgeons used to directly infringe the method claims of NuVasive’s patent, and that Medtronic induced the surgeons’ infringement. Medtronic contended that it had not induced infringement because it had a reasonable belief, under Medtronic’s narrow construction of the claims, that the device did not perform the claimed method.
The case was tried in the district court for the Southern District of California. The court instructed the jury on the requirements for proving induced infringement, under 35 U.S.C. section 271(b), as set forth by the Supreme Court in Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754 (2011). Under Global-Tech, induced infringement requires proof that the defendant knew of the plaintiff’s patent and knew that the acts it induced were infringing. Global-Tech also held that a plaintiff can prove the defendant’s knowledge that the induced acts were infringing by proof of the defendant’s willful blindness, which can be proved by circumstantial evidence.
At trial, the jury found that Medtronic had induced infringement of NuVasive’s patent by instructing the surgeons on the use of Medtronic’s device. On appeal, the Federal Circuit affirmed the jury’s verdict. The Supreme Court then decided Commil USA, LLC v. Cisco Systems, Inc., 191 L. Ed. 2d 883 (2015), which confirmed the Global-Tech test for induced infringement.
Medtronic filed a petition for certiorari in the Supreme Court, seeking an order vacating the Federal Circuit’s decision and remanding the case for further consideration under Commil. In particular, Medtronic argued that NuVasive had not proved that Medtronic knew that the surgeons’ acts it induced were infringing.
The Supreme Court granted certiorari and remanded the case to the Federal Circuit. On remand, the sole question before the Federal Circuit was whether NuVasive had produced substantial evidence that Medtronic knew, or was willfully blind to the fact, that the surgeons using their device infringed NuVasive’s patent. Medtronic argued that it did not believe its device infringed the patent and that this belief negated the specific intent required for a finding of knowledge.
The Federal Circuit disagreed and affirmed its original decision. The court held that Medtronic’s belief was objectively unreasonable, and that there was substantial evidence that Medtronic knew (or was willfully blind to the fact) that the surgeons infringed NuVasive’s patent. In a concurring opinion, however, one of the judges pointed out that the majority based its conclusion solely on the evidence of direct infringement (that the surgeons’ use of the device performed the claimed method), not on any evidence of Medtronic’s knowledge or willful blindness.
This case appears to be a warning – if you think you may be inducing infringement of a patent, relying on your “reasonable” belief that there is no underlying direct infringement is a bad idea!