by Dennis Crouch
On remand from the Supreme Court vacatur, the Federal Circuit has reaffirmed its prior NuVasive decision and – in the process limited the reach of the Supreme Court’s 2015 decision of Commil USA, LLC v. Cisco Systems, Inc., 135 S. Ct. 1920 (2015).
Opinion: Warsaw Orthopedic, Inc. v. NuVasive, Inc. (Fed. Cir. 2016)
The primary holding of Commil is that belief-of-patent-invalidity is not a defense to allegations of inducing infringement. In Commil, the Supreme Court also indicated that inducement requires proof that the accused inducer knew or was willfully blind to the fact that the actions being induced would constitute patent infringement. (clarifying a potential ambiguity of Global Tech).
Here, the adjudged infringers gave instructions to doctors on how to use its surgical tools in a way infringed NuVasive’s patent. However, the companies argue that the evidence presented to the jury was insufficient to find that they “it knew (or was willfully blind to the fact) that it was instructing doctors to infringe” the asserted patent (even after being sued for infringement).
Medtronic’s explanation of its ‘belief‘ was that it had constructed a reasonable claim construction argument under which its activities would not infringe. To resolve this, the Federal Circuit delved deep into the claim construction argument and found “no support in the language of claim 1 of the ’236 patent or its prosecution history to support MSD’s [claim construction] position.”
An oddity of the decision is that the Court suggests (but seemingly does not hold) that Medtronic waived its claim construction argument by failing to seek a revised claim construction.
In any event, MSD’s effort at this late stage amounts to a request for a revised claim construction that it never sought. That is improper, as we previously ruled in our earlier opinion. Warsaw, 778 F.3d at 1373 (citing Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314, 1321 (Fed. Cir. 2003)). Moreover, claim construction is, of course, ultimately a question of law that must be left to the court, not the jury. Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 837 (2015). We have previously held that it is improper for juries to hear conflicting expert testimony on the correctness of a claim construction, given the risk of confusion. CytoLogix Corp. v. Ventana Med. Sys., Inc., 424 F.3d 1168, 1172 (Fed. Cir. 2005).
Thus, it is unclear hear what the outcome would be if Medtronic had presented a reasonable non-infringement argument based upon an alternative claim construction.
The opinion of the court was filed by Judge Dyk. Judge Reyna also filed a concurring opinion. One aspect of Judge Reyna’s concern is that the lower courts will latch upon the “no support” language of the majority opinion as the test for whether an alternative claim construction is reasonable. Rather, Judge Reyna would propose procedural limits:
While the Supreme Court in Commil stated that a defendant lacks the intent for induced infringement where his reading of the claims is both different from the plaintiff’s and reasonable, I do not believe Commil opens the door for this court to assess the reasonableness of a defendant’s non-infringement position that is based on a claim construction that a defendant failed to raise, or that was not before the jury. In this case, MSD proposed no construction for the “stopping” limitation, arguing that the limitation has a plain meaning to one of ordinary skill in the art. I would resolve this case on this basis. Where a defendant proposes no construction of a claim term, this court is speculating to determine what the defendant’s reading of the claims is. We should not be in the business of creating claim constructions for defendants in induced infringement actions so that we may then assess whether the claim constructions are reasonable.
At the same time, Judge Reyna also faulted the majority for failing to actually consider whether evidence of knowledge was presented.
In Global-Tech, the evidence demonstrated the defendant’s willful blindness. The opinion here cites no similar evidence. The opinion’s analysis suggests that any time a defendant’s products are found to directly infringe, the plaintiff has sufficiently established the defendant’s intent to induce infringement. This proposition conflicts with Global-Tech, Commil, and our caselaw.
Comment: The procedural approach here seems interesting and useful. The suggestion is a rule that an inducement defendant who is arguing that it had a reasonable non-infringement belief must actually present that argument to prove no underlying direct-infringement. That approach require the judge/jury to first determine the merits of the argument before then determining whether it was at least reasonable.