June 3, 2016

Incorrect Position on Infringement is not a Defense to Inducement

By Bryan K. Wheelock, Principal

In Warsaw Orthopedic, Inc. v. NuVasive, Inc., [2013-1576, 2013-1577] (June 3, 2016), on vacatur and remand from the Supreme Court (for further consideration in light ofCommil) the Federal Circuit reaffirmed its the district court’s judgment with respect to induced infringement of U.S. Patent No. 7,470,236 and reinstated its earlier judgment in other respects.

The only question was whether there was substantial evidence for the jury to conclude that the counterclaim defendant, MSD, induced infringement of the ’236 patent.  The Federal Circuit reviewed the law of inducement, noting that under Global-Tech and Commil proof of induced infringement requires not only knowledge of the patent, but also proof the defendant knew the induced acts were infringing, and thatCommil reaffirmed that willful blindness can satisfy the knowledge requirement for active inducement. The Federal Circuit further said that Global-Tech also held that knowledge of infringement can be inferred from circumstantial evidence.

At issue was the claim limitation:

increasing the intensity level of said stimulus signal until said predetermined neuro-muscular response is elicited by said stimulus pulse and stopping the emission of said stimulus signal immediately after said predetermined neuromuscular response is detected.

MSD argued that no reasonable jury could have inferred that it had knowledge of (or was willfully blind to) its customers’ infringement of the ’236 patent, arguing that under its claim construction, the acts were not infringement.  The Federal Circuit found that MSD’s position was “clearly inconsistent” with the claim construction.  The Federal Circuit said that the undisputed evidence before the jury showed that, immediately
after nerve stimulation, the NIM-Eclipse device stopped “stimulus pulses” within the meaning of the claims. The Federal Circuit found that there is no support in the language of claim or its prosecution history to support MSD’s construction.

The Federal Circuit said that given the strength of the evidence presented, a reasonable jury could have concluded that MSD must have known, or was willfully blind to the fact that its device met the properly construed claims, and in particular the “stopped” limitation.

After Commil, a belief of invalidity was no longer a defense of inducement,  Now, afterNuVasive, an incorrect belief that the actions do not infringe also is not a defense to infringement.  The Federal Circuit did not appear concerned with the reasonableness of MSD’s position, just its correctness,  Thus, if a party induces conduct that is eventually found to infringe a valid patent, that party had induced infringement if it knew about the patent.