Petition of the Day: Medtronic v. NuVasive

by Dennis Crouch

In this pending certiorari petition, Medtronic directly asks for the Supreme Court for a GVR – Grant-Vacate-and-Remand order for the Federal Circuit to reconsider its prior decision in light of Commil USA, LLC v. Cisco Systems, Inc., 135 S. Ct. 1920 (2015). [Read the petition petition.nuvasive.]

The primary holding of Commil is that belief-of-patent-invalidity is not a defense to allegations of infringement.  Relevant for Medtronic, the Supreme Court also indicated in Commil that inducement requires proof that the accused inducer knew that the actions being induced constituted patent infringement.  Those statements from the Supreme Court have been seen as clearing up uncertainty following Global-Tech.

Here, Medtronic argues that it had no knowledge of infringement – even after being sued for infringement. In particular, Medtronic argues that “[t]here is not a shred of evidence that Medtronic knew surgeons using its NIM-Eclipse medical device during spinal surgery would infringe NuVasive’s patent. . . . Since first learning of NuVasive’s patent, Medtronic reasonably believed using its NIM-Eclipse device during surgery did not infringe under a proper reading of the patent claims.”  [query whether someone can “know” something is true while also “believing” that it is false]

Initially, NuVasive did not provide a responsive brief to the petition.  However, the Supreme Court has requested responsive briefing and set an extended deadline of December 9, 2015 for that submission.  In its appellate briefing, NuVasive had explained the following:

Medtronic’s intent is a question of fact, and the jury reasonably found that Medtronic intended to induce infringement. NuVasive notified Medtronic of its likely infringement in a June 2009 letter, and then counterclaimed for infringement in August 2009. Despite these warnings, Medtronic continued to instruct surgeons to use the “Nerve Proximity Mode” of NIM-Eclipse in an infringing manner. The jury was correctly instructed on the law and therefore understood that Medtronic could be liable for inducement only if Medtronic knew that it was both inducing these acts and inducing infringement (or was willfully blind). Substantial evidence supports the jury’s inference that Medtronic had the requisite knowledge and intent based on these facts.

My money is on NuVasive here, but a GVR is so easy for the Supreme Court to issue.

 

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

4 thoughts on “Petition of the Day: Medtronic v. NuVasive

  1. On reading the petition and patent, Medtronic makes a convincing case for why surgeons don’t infringe the method claims in the patent using their apparatus. If true, then Medtronic can’t be inducing infringement. However, the petition focuses on the scienter aspects. So, they are in a position of maintaining they had a reasonable belief even though the proceedings below went against them. Unfortunately, the lower court orders were not appended to the link to the petition so I can’t comment further.

    How does this differ from willful infringement? Is it the same test? (I don’t know.) One difference is that willful infringement only affects size of the damage award. Lack of inducement means no damages. Is it possible to be not guilty of inducing infringement until a case is decided adversely and guilty thereafter?

  2. The quoted NuVasive response is admirably short and clear, yet seems to “cover all the bases” for alleged inducement? [Patent knowledge, infringement threat, continued acts of inducement thereafter, jury instructions, substantial evidence to support a jury verdict on fact issues.]

    But, WHEN did Medtronic seek and obtain a credible non-infringement opinion?

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