Docket No. 2013-1576, -1577
LOURIE, DYK, REYNA (C)
June 3, 2016
Brief Summary: On remand from SCOTUS, this decision affirmed DC/jury finding of induced infringement.
Summary: The original March 2, 2015 decision was vacated by SCOTUS at MSD’s request in light of the Commil decision (US, May 2015; and Global-Tech, US 2011). MSD successfully argued to SCOTUS that the test for induced infringement under 35 USC § 271(b) was not correctly applied. This opinion explains the earlier decision is only affected with respect to its decision regarding NuVasive’s US 7,470,236 that affirmed a jury finding that the claims were “directly infringed by users of MSD’s ‘NIM-Eclipse’ device and that MSD induced this infringement.” Commil and Global-Tech were summarized as holding “that proof of induced infringement requires not ‘only knowledge of the patent’ but also ‘proof the defendant knew the [induced] acts were infringing”, “that willful blindness can satisfy the knowledge requirement for active inducement under § 271(b) (and for contributory infringement under § 271(c)), even in the absence of actual knowledge”, and “that knowledge of infringement can be inferred from circumstantial evidence” (“requisite intent to induce infringement may be inferred from all of the circumstances” (Broadcom, FC 2008)). The FC opinion explained that only step (c) of claim 1, “the ‘stopping’ step”, which “requires ‘increasing the intensity level’” of a “stimulus signal” until a neuro-muscular response is elicited and “stopping the emission of said stimulus…immediately after” the response is detected, is relevant to this case on remand”. The question here is “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 argued that “it reasonably construed narrowly the ‘stopping’ limitation…to require a complete termination of emission of any and all electrical impulses” from its device and that “it continues emitting electrical pulses at lower energy rather than stopping emission of all electrical signals.” The FC panel “conclude[d] that there was substantial evidence that MSD’s infringement position was objectively unreasonable” (“clearly inconsistent with the construction of ‘said stimulus signal’ that MSD itself propounded”) and that claim 1 only requires stopping “one particular stimulus signal” (“said stimulus signal”). And it found MSD’s argument regarding the prosecution history to be unpersuasive (not showing the “stopping amendment” requiring “stoppage of any and all electrical stimulus”). It also rejected “MSD’s effort at this late stage” to revise the claim construction (HP, FC 2003). And it concluded “a reasonable jury could have concluded MSD must have known [or was willfully blind to the fact] that its NIM-Eclipse device ‘stopped’ emitting ‘said stimulus signal’” as required by the claims. Thus, the DC judgment was affirmed. Judge Reyna’s concurring opinion warned that Commil may “open 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.”