The Supreme Court has issued a GVR order in Medtronic v. NuVasive and ordered the Federal Circuit to consider how Commil impacts the case.
The petition for a writ of certiorari is granted. The judgment is vacated, and the case is remanded to the United States Court of Appeals for the Federal Circuit for further consideration in light of Commil USA, LLC v. Cisco Systems, Inc., 575 U. S. ___ (2015).
In its petition, Medtronic had directly requested for the Supreme Court to issue this GVR – Grant-Vacate-and-Remand order.
The primary holding of Commil is that belief-of-patent-invalidity is not a defense to allegations of inducement. 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 some uncertainty following Global-Tech.
Although Medtronic did know of the patent at issue, the patentee apparently did not prove that the defendant “knew surgeons using its [accused] NIM-Eclipse medical device during spinal surgery would infringe NuVasive’s patent.” Rather, Medtronic argues that it “reasonably believed using its NIM-Eclipse device during surgery did not infringe under a proper reading of the patent claims.”
The case will likely serve as a bellwether indication of how the Federal Circuit will work through the mens-rea requirements for inducement post Commil and Global Tech.
In Commil, the SC set up reasonable belief of non-infringement as a defense to inducement. Kennedy said that 271(b) requires “more” than knowledge that a defendant “might” infringe under a reasonable reading of the claims that differs from the plaintiff’s.
This essentially leads to willful infringement by inducement, exclusive of good faith belief of invalidity.
steve, and hopefully enhanced damages, attorneys fees and an injunction.
And to think, in all those hunderd + years that patent owners sued in equity that not once did anyone say that an injunction should be denied because “damages” had not been proved.
A defense of not grafting scienter requirement. Or saying knowing that you are contributing to a completion of an act is enough.
I sell a nail, obviously that could be anything. But if I sell specialized parts that I know will be used to make a widget, that’s active. It’s irrelevant whether there is knowledge of the patent. That’s just one example.
It’s okay to start with the narrowest interpretation. But the Court invites the attorney to argue a broader one, the attorney has a duty as an officer of the court to make one. And the former solicitor general of Texas knows that!
Oops, that was supposed to be a reply in post #1.
Given the now extremely dangerous reliance on mere opinions of potential invalidity of a patent allegedly infringed by INDUCED infringement, the accused inducer has an even greater reason to promptly petition for an IPR. So much so that one can wonder when a law firm that fails to so counsel the accused inducer might eventually get sued? [One does not have to like IPRs to need to face the reality of their existence.]
[One can also wonder when some judges in any patent case will start to ask “If you have a good faith belief that this patent is invalid in view of prior patents or publications, why didn’t you file an IPR?”]
However, as a series of recent Board-rejected IPR petitions has demonstrated, IPR petition adequacy and completeness re attacked claims is essential to even get in the IPR trial door. IPR petitions cannot be treated like some kind of ex parte prosecution. In procedure and strictness IPRs are far more like modern interferences. [Modern interferences have been decided on prior art and evidence or pleading inadequacy issues at least as often as (and before) any priority of invention issues.] The PTO made that clear before IPRs even started.
I have to chuckle at he side note of “[One does not have to like IPRs to need to face the reality of their existence.]”
I am not sure that thatstrawman has ever been questioned, Paul.
I do not recall anyone ever indicating that “IPRs do not exist.”
I do recall certain sAmeones though pretending that constitutional infirmities do not exist (or calling them ‘moot’).
Do you recognize the irony, Paul?
“anon” I do not recall anyone ever indicating that “IPRs do not exist.”
Perhaps that’s why Paul made the notation as a “side note” rather than the central thesis of a nutty rant.
And, yes, the “irony” is noted.
^^^ More blight from the usual source.
Prof, take note.
Malcolm, your response is utter nonsense.
Whether or not Paul made the comment “as a side note” or as a “central thesis of a nutty rant” is altogether immaterial to the observation I made that the argument is a strawman.
Further, I think your tendency to “react” induced you to add the “nutty rant,” part, and you quite missed that it was Paul and not I that made said “nutty rant” in the first place.
And it is quite apparent that you do not note the irony.
Try a little harder to add something of merit with your posts please.
My side comment was, of course, in anticipation of more endless blog comments that anything in the AIA one does not want to have to deal with, especially IPRs, can be ignored by expressing a repeatedly judicially rejected personal opinion of unconstitutionality. Feel free to wish on, but spare us the repetitions.
That’s great Paul, but as noted, your “argument” is a fallacy, and it is you that continues to exhibit the very thing that you write about.
Maybe you want to write something different after thinking about the counter point I present to you. Or at least, stay away from strawmen.
your “argument” is a fallacy
You must be referring to the fake “argument” that Paul never made. Maybe it was the voices in your fillings trying to tell you something?
For the record, this: “One does not have to like IPRs to need to face the reality of their existence”
is neither false nor is it an argument. It’s just a side note and a helpful reminder.
Let me emphasize it for everyone: TAKE ADVANTAGE OF THE IPR SYSTEM. IT’S A USEFUL TOOL FOR INVALIDATING PATENTS THAT SHOULD NEVER HAVE BEEN GRANTED
“that Paul never made”
No.
Quite the opposite.
I am referring to the actual argument he made – that no one but him has put forth.
It’s all here in black and white Malcolm. Your rather mindless “that’s not an argument” does not change the fact that it IS an argument. One that no one but Paul has ever advanced.
Prof – pay attention – is this C R P from Malcolm really what you want your “ecosystem” to be?
Paul, personal question here. Do you believe that patents
1. Are;
2. Are not;
3. Are not but should be; or
4. Are not and should not be,
property.
I did not expect a reply from Paul.
Paul, it is good to see that the PTAB is now closely looking at the petition. That was not always the case, trust me.
Were the key underlying facts ever addressed by any of the courts who heard this case, i.e., did Medtronic have a reasonable non-infringement position after it learned of NuVasive’s patent? Was Medtronic’s “proper reading” of NuVasive’s claims in fact “proper” or was it narrowing them unreasonably to come up with its non-infringement position (“unreasonably” in this instance would include taking a position inconsistent with whatever “reasonable” claim construction position(s) Medtronic adopted for the purposes of its failed invalidity contentions)?
Malcolm,
Your desired “facts” are inapposite to the holding. It does not matter whether or not a party (correctly or incorrectly) “feels that a claim is invalid (and thus a position for non-infringement.
There is no such “get out of tort” card.
A reasonable non-infringement position is of course very different than a reasonable invalidity position.
You might be off the hook if you reasonably believe that what you’re inducing does not *infringe* a given patent, but you NEVER get to induce infringement just because you believe a patent is invalid. Otherwise people could go around inducing violations of any law they felt was improperly passed (e.g. unconstitutional), etc.
Ken: you NEVER get to induce infringement just because you believe a patent is invalid
Right — that’s what the Supremes told us in Commil.
It does not matter whether or not a party (correctly or incorrectly) “feels that a claim is invalid (and thus a position for non-infringement.
I’m asking about Medtronic’s beliefs as to whether the steps recited in the claims were practiced by the allegedly induced doctors, not Medtronic’s invalidity positions.
I don’t understand why there should be a difference between a mistaken invalidity defense and a mistaken infringement defense?
I can think of a couple reasons or at least differences between the two which may support different outcomes. First, regarding infringement, the defendant is ultimately in control of their part of the infringing activity. On the other hand, an issued patent has the default position of being presumed valid.
Ok, but why, then, is reasonable belief of non-infringement not a defense for infringement if it is a defense for induced infringement. Is it just the language of the statute and the inclusion of “actively”?
J,
Direct infringement has no “mental state” component. It is what can be called a “strict liability” tort.
J: I don’t understand why there should be a difference between a mistaken invalidity defense and a mistaken infringement defense?
Maybe it will help to consider a specific claim: “A method for transporting donuts, comprising driving a car comprising said donuts.”
You know about the patent claim. You give me a danish and you tell me to drive it to your grandma’s house in a car. Evidence that you believed the claim was invalid is not a defense to a charge of inducement. In contrast, evidence that you held a reasonable belief that a danish is distinct from a donut is a defense to a charge of inducement.
Remember that these mens rea issues (beliefs about patent validity or infringement) are distinct from actually proving invalidity or non-infringement.
Perhaps one reason for the different treatment of the scienter issues is to encourage would-be inducers to invalidate over-broad patents (an action which benefits people in addition to the accused infringer).
The example wasn’t helpful–I get the difference of inducement and infringement. I understand Cisco. I just don’t understand why Cisco doesn’t apply here.
The burden of proof to prove one or the other seems quite weak to me.
J: I just don’t understand why Cisco doesn’t apply here.
Who said that “Cisco doesn’t apply here”? The Supreme Court just told the Federal Circuit to apply it.
The example wasn’t helpful
I’m sorry you weren’t helped. I did provide one possible answer to the question you asked, independent of the example. So, too, did I.I.T. Choose the one you like best, or choose both, or wait for another one to come along.
why, then, is reasonable belief of non-infringement not a defense for infringement if it is a defense for induced infringement.
Because infringement doesn’t have a mens rea element. Induced infringement does (per the Supreme Court).
Right. So my point is, this issue of accidentally infringing a patent points to the position that you can be liable to a patent without knowing about the patent. So why is inducement special? Yes, active inducement is required, but isn’t it enough that the inducer knows that the infringer will, in fact, infringe?
The “knowing” aspect is indeed being sussed out.
Sort of like trespass – if you “know” that the land you are walking on is both private and not yours, well, you are trespassing even if you do not know whose land you are walking on.
The “trick” of course will be the “private” aspect. This is where notice of infringement (as in marking, or other forms of notice) comes into play.
And when I mean, knowing the infringer will infringe, I mean specifically, that there is knowledge by the inducer that the infringer will complete an act that turns out to be infringement.
“Perhaps one reason for the different treatment of the scienter issues is to encourage would-be inducers to invalidate over-broad patents (an action which benefits people in addition to the accused infringer).”
Believe it or not – the rest of the world is not strictly as anti-patent as you are Malcolm. You are letting your 0bsession get the better of you yet again.
Rules of law exist quite separate from invalidating what you FEEL are over broad patents (or as you have put on the record, ANY software patent, since you have stated that no such patent deserves protection).
“anon” Rules of law exist quite separate from invalidating what you FEEL are over broad patents
That’s nice. The policy of encouraging the quick invalidation of overbroad patents is one that is favored by pretty much everyone except for you and your cohorts.
Do keep digging,though.
Cohorts (again)….
LOL – OH NOES Malcolm uses the emotive word “cohorts” and all of a sudden the mere desire to have respect for patents under the law is a “dastardly thing – like wanting to make money (gasp).. Such “g-g-grifters” like thing to want.
OH NOES.
What a putz.
“Do keep digging,though.”
Once again, the man clenching tight the shovel is telling someone else to dig….
“The policy of.. is favored by pretty much everyone…”
GREAT – then take the proper means to that desired end and change the statutory law through the branch of the government authorized to write that law.
Once again Malcolm, you confuse (no doubt purposely) the issue here. You just cannot have ends regardless of the means.
“Maybe it will help to consider a specific claim”
Maybe not.
In fact, it would be better if one understood the law OUTSIDE OF any proffered claim.
You know, because understanding the law does not mean “defending” any particular claim.
“anon” understanding the law does not mean “defending” any particular claim.
Nobody ever suggested otherwise. Are you through ranting or are you just getting warmed up?
“Nobody ever suggested otherwise
WOW, like that’s not an obvious L 1 E.
You are like totally losing it, as YOU are the one that makes it a mantra accusing me endlessly of “defending junk claims.”
Too bad for you that I have made it abundantly clear (even in short declarative sentences) that I am doing no such thing.
It is NOT surprising to have you hear making a baseless and false accusation about his being some sort of “rant” on my end (after all, it is your rant and your oh so typical blight of AccuseOthersOfThatWhichMalcomDoes on display).
Pay attention Prof. Crouch – this is exactly the sAmeones posting in the same blight manner that is simply offensive and not conducive to any dialogue on your blog. Yet, you do nothing about it.
How in any objective sense do you expect your “ecosystem” to be healthy when this runs rampant?
“anon” a baseless and false accusation about his being some sort of “rant” on my end
LOL
He’s not ranting, folks.
Gee that “folks” note changes “everything”…
somehow the fact that it is your rants about “defending junk claims” that prove the L 1 E that escapes you.
What a schmuck.
Because mistaken invalidity is a mistake of law and traditionally mistake of law is not a defense to violation of law.
Good point Random (the presumption of validity addresses this).
What is the difference between incorrectly believing that the patent is invalid and incorrectly believing that your actions do not infringe a patent?
By the way, we can thank Ted Cruz for the mens rea requirement. He botched the Globaltech argument, left the Supreme Court guessing on that issue, and they guessed wrong.
J, botched?
Maybe not botched. It’s not like he accused Breyer of having “New York values.” But it was extremely weak. The Court continuously asked for guidance, inviting him to take a position, and he was like “I don’t care, my client wins either way.” I have a feeling that Justice Scalia would rather vote for Clinton than Cruz.
What position could he have taken that he did not?
See above, post 4.
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