Conmil v. Cisco does not change NuVasive result

This case returns to this court on vacatur and remand
from the Supreme Court, “for further consideration in
light of Commil USA, LLC v. Cisco Systems, Inc., [135 S.
Ct. 1920 (2015)].” Medtronic Sofamor Danek USA, Inc. v.
NuVasive, Inc., 136 S. Ct. 893 (2016) (Mem.). On remand,
we reaffirm the district court’s judgment with respect to
U.S. Patent No. 7,470,236 (“the ’236 patent”) and reinstate
our earlier judgment in other respects.


Background


The ’236 patent is directed to a method for detecting
the presence of and measuring distance to a nerve during
surgery. Warsaw, 778 F.3d at 1372. The patented method
requires sending a series of electrical pulses that
gradually increase in strength until a pulse reaches
sufficient strength to elicit a nerve response. Id. Proximity
to the nearest nerve is proportional to the strength of
the pulse that elicited the response.



The issue before the CAFC


There is no dispute that the jury was correctly instructed
as to the standard for induced infringement
under Global-Tech (and Commil). The jury was instructed
that it was NuVasive’s burden to prove that “the
alleged infringer knew or was willfully blind to the fact
that the induced acts constituted patent infringement of
at least one patent claim,” in addition to the other elements
of induced infringement. J.A. 213. MSD does not
dispute that the jury was correctly instructed as to the
relevant claim limitations of the ’236 patent and as to
NuVasive’s burden to prove infringement by a preponderance
of the evidence.

Thus, the question before us now is a limited one:
whether the jury was presented with substantial evidence
that MSD knew (or was willfully blind to the fact) that it
was instructing doctors to infringe the ’236 patent. MSD
acknowledges that its “challenge is to the sufficiency of the
evidence that it indirectly infringed.” Appellants’ Supp.
Br. at 14. In the earlier appeal we did not address that
question explicitly, stating only that “[t]here was evidence
that MSD was aware of the patent prior to the litigation
and that MSD specifically taught doctors to use the
product during the surgical procedures in an infringing
manner.” Warsaw, 778 F.3d at 1373. We now address the
question.



MSD loses


MSD argues that no reasonable jury could have inferred
from the evidence before it that MSD had
knowledge of (or was willfully blind to) its customers’
infringement of the ’236 patent. However, here we conclude
that there was substantial evidence that MSD’s
infringement position was objectively unreasonable and
that the jury, based on this evidence, could reasonably
have concluded that MSD had knowledge (or was willfully
blind to the fact) that it was infringing.



Footnote 2 of the majority opinion:


The concurrence expresses concern that the majority
opinion could be read to suggest “that any time a
defendant’s products are found to directly infringe, the
plaintiff has sufficiently established the defendant’s
intent to induce infringement.” Concurrence at 4. To be
clear, we do not suggest that inducement liability is that
broad. To show the intent to induce infringement, it is
sufficient that the plaintiff establish that a defendant’s
asserted belief in non-infringement was unreasonable.



The last words of Judge Reyna's concurrence:


In Global-Tech, the Supreme Court cited evidence that
the accused infringer had intentionally withheld key
information from its patent attorney when seeking a
right-to-use opinion. Global-Tech Appliances, Inc. v. SEB
S.A., 563 U.S. 754, 131 S. Ct. 2060, 2071 (2011). 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.



**