Warsaw Orthopedic, Inc. v. Nuvasive, Inc.
824 F.3d 1344
| Fed. Cir. | 2016Background
- NuVasive sued MSD for infringement of U.S. Patent No. 7,470,236 (the ’236 patent); MSD counterclaimed. Prior Federal Circuit decision affirmed liability for direct and induced infringement as to the ’236 patent.
- The Supreme Court granted GVR (vacate and remand) in light of Commil USA LLC v. Cisco Systems, Inc., prompting the Federal Circuit to reconsider whether there was substantial evidence that MSD knew (or was willfully blind to) doctors’ infringement under the inducement standard clarified by Commil.
- The disputed claim limitation is the ‘‘stopping’’ step in claim 1, requiring ‘‘increasing the intensity...until...response is elicited and stopping the emission of said stimulus signal immediately after [the] response is detected.’’
- The district court construed ‘‘stimulus signal’’ as "an electrical signal for eliciting a neuromuscular response" and left the ‘‘stopping’’ phrase to the jury under its plain-meaning instruction; the jury found direct and induced infringement.
- MSD argued on remand that its device (NIM‑Eclipse) did not meet the ‘‘stopping’’ limitation because it reduces but does not cease all electrical pulses after a response; NuVasive argued the claim requires stopping the particular stimulus signal that elicited the response, which the NIM‑Eclipse does.
- The panel concluded there was substantial evidence that (1) MSD knew of the ’236 patent, (2) the NIM‑Eclipse stopped the particular stimulus signal immediately after eliciting a response, and (3) MSD’s contrary non‑infringement position was objectively unreasonable, so the jury could infer knowledge or willful blindness and sustain induced‑infringement liability.
Issues
| Issue | NuVasive's Argument | MSD's Argument | Held |
|---|---|---|---|
| Was there substantial evidence that MSD had the required knowledge or willful blindness for inducement under § 271(b)? | Evidence that MSD knew the patent and taught surgeons to use the device in the infringing way; device behavior shows it meets the claim so MSD’s non‑infringement view was unreasonable. | MSD argued its reasonable reading of the claims (device continues emitting lower‑energy pulses) meant it did not infringe and thus lacked intent to induce. | Held: Yes. Substantial evidence supported inference that MSD knew or was willfully blind to doctors’ infringement. |
| Proper meaning of the ‘‘stopping the emission of said stimulus signal’’ limitation | The phrase requires stopping the particular stimulus signal that elicited the neuromuscular response. | MSD argued it requires complete cessation of all electrical emissions; device therefore noninfringing. | Held: Court adopts ‘‘said stimulus signal’’ construction (electrical signal that elicits response); MSD’s complete‑cessation reading is inconsistent with claim language and prosecution history. |
| Relevance of prosecution history for claim scope | Prosecution amendment adding ‘‘stopping’’ distinguished prior art that stimulated continuously; supports stopping the stimulus capable of eliciting a response. | MSD relied on prosecution history to argue claim requires cessation of all stimulation. | Held: Prosecution history supports NuVasive’s reading (stop the stimulus capable of eliciting response), not MSD’s all‑signals theory. |
| Whether the Supreme Court’s Commil decision required vacatur of induced‑infringement judgment | NuVasive: jury was properly instructed under Global‑Tech/Commil; evidence supports knowledge/willful blindness. | MSD: Commil clarifies inducement requires proof knowledge of infringement; asked for GVR to reassess that showing. | Held: After remand, judgment as to direct and induced infringement of the ’236 patent is affirmed; jury instructions and evidence satisfy Commil standard. |
Key Cases Cited
- Commil USA LLC v. Cisco Sys., 135 S. Ct. 1920 (2015) (reaffirmed Global‑Tech standard that inducement requires knowledge that induced acts are infringing; belief in invalidity not a defense)
- Global‑Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754 (2011) (knowledge requirement may be satisfied by willful blindness; knowledge can be inferred from circumstances)
- MGM Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005) (circumstantial evidence can show unlawful objective to induce infringement)
- Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683 (Fed. Cir. 2008) (intent to induce may be inferred from all circumstances)
- Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009) (plaintiff may prove intent through circumstantial evidence)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (claim construction can involve subsidiary factual findings and is ultimately a legal question)