Warsaw Orthopedic, Inc. v. Nuvasive, Inc.
778 F.3d 1365
Fed. Cir.2015Background
- Warsaw Orthopedic sued NuVasive for infringement of U.S. Pat. Nos. 5,860,973 (oversized lateral spinal implants) and 6,945,933 (minimally invasive tissue retractors); NuVasive counterclaimed that Warsaw (and MSD) infringed U.S. Pat. No. 7,470,236 (intraoperative neuromonitoring).
- A jury found the asserted claims of the ’973 patent valid and infringed, the asserted claims of the ’933 patent infringed under the doctrine of equivalents, and the asserted claims of the ’236 patent infringed; damages and ongoing royalties were awarded.
- Post-trial motions (JMOL/new trial, supplemental damages, injunction) were denied; parties appealed validity, infringement, and damages issues.
- Key factual disputes at trial: whether prior Brantigan references anticipated/obvious the ’973 claims (issue of lateral insertion capability); whether a three-pronged accused retractor was equivalent to the claimed two-pronged device (’933); whether the NIM-Eclipse practice satisfied the ‘‘stop’’ step in the ’236 method claim.
- Warsaw sought lost profits from three revenue streams (sales of unpatented fixations, royalties from related manufacturers, and intercompany “true-up” payments); the jury awarded about $101.2M but the verdict mixed lost profits and royalties in an unclear way.
Issues
| Issue | Warsaw's Argument | NuVasive/MSD's Argument | Held |
|---|---|---|---|
| Validity of asserted ’973 claims (anticipation/obviousness) | Brantigan references did not disclose implants "capable" of lateral insertion; claims definite | Brantigan prior art anticipated/rendered obvious; claims indefinite because of relative anatomical metrics | Jury verdict of non‑invalidity affirmed — substantial evidence that Brantigan did not teach lateral insertion; Nautilus indefiniteness challenge failed (no clear‑and‑convincing proof) |
| Infringement of ’933 patent (literal vs. doctrine of equivalents) | Accused three‑prong device is equivalent to claimed two‑prong retractor | No literal infringement because claims require two movable/pivoting prongs | Infringement under doctrine of equivalents affirmed — substantial evidence that three‑prong device functions equivalently and differences were insubstantial |
| Infringement of ’236 patent (stop step / induced infringement) | Accused device ‘‘stops’’ by restarting series (decrease constitutes end of prior signal); induced infringement by MSD | MSD contends accused device continues pulses (no stopping); insufficient evidence of inducement | Infringement and inducement affirmed — jury could reasonably find the device ‘‘stops’’ by restarting and that MSD taught infringing use |
| Damages: lost profits and reasonable royalty for ’973 and ’933 | Warsaw sought lost profits (fixations, royalties from related manufacturers, and MSD true‑ups) and reasonable royalty; also sought supplemental damages for gap period | NuVasive argued lost profits were improper (convoyed sales not shown; Warsaw cannot recover related companies’ lost profits; true‑ups not attributable) | Liability findings affirmed but damages award vacated in part and remanded: lost‑profits recovery reversed (Warsaw limited to reasonable royalty); district court must hold new damages trial to compute royalty and clarify periods (supplemental damages may be sought as reasonable royalty) |
Key Cases Cited
- Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) (indefiniteness test: claim must inform skilled artisan of scope with reasonable clarity)
- Rite‑Hite Corp. v. Kelley Co., Inc., 56 F.3d 1538 (Fed. Cir. 1995) (lost‑profits framework and convoyed‑sales analysis)
- Poly‑America, L.P. v. GSE Lining Tech., Inc., 383 F.3d 1303 (Fed. Cir. 2004) (patentee may not recover lost profits of related companies/non‑exclusive licensees)
- Aqua Shield v. Inter Pool Cover Team, 774 F.3d 766 (Fed. Cir. 2014) (reasonable royalty measures value of what was taken)
- DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005 (Fed. Cir. 2006) (infringement is a factual question reviewed for substantial evidence)
- Micro Chem., Inc. v. Lextron, Inc., 318 F.3d 1119 (Fed. Cir. 2003) (standard of review for damages determinations)
- SmithKline Diagnostics, Inc. v. Helena Labs. Corp., 926 F.2d 1161 (Fed. Cir. 1991) (distinction between actual damages/lost profits and reasonable royalty)
- Allen Archery, Inc. v. Browning Mfg. Co., 898 F.2d 787 (Fed. Cir. 1990) (related‑party royalties have limited probative value for establishing an arms‑length rate)