What Does the Supreme Court’s Recent Remand of Medtronic v. NuVasive Mean for a “Reasonable Ignorance” Defense?
Medtronic v. NuVasive is a patent infringement case involving a Medtronic device which monitors nerve activity during spinal surgery. NuVasive claims that the device can be used to infringe its patent, U.S. Pat No. 7470236, and that Medtronic was liable for indirect infringement on the grounds that it instructed doctors how to use the product in an infringing manner. Among other defenses, Medtronic claimed that it reasonably believed that its product could not be used to practice NuVasive’s '236 patent. NuVasive presented evidence that Medtronic knew of the '236 patent and provided instructions to surgeons on the use of the product, arguing that the jury could “infer” intent to infringe from these facts. A jury found in favor of NuVasive, and the Federal Circuit affirmed, finding that there was sufficient evidence for the jury to conclude that Medtronic knew that its instructions would induce doctors to infringe the '236 patent.
But the case does not end there. The United States Supreme Court recently granted review to Medtronic, and vacated the decision, instructing the Federal Circuit to reconsider its ruling in light of Commil v. Cisco, a 2013 the Supreme Court decision which held that liability for indirect infringement attaches only if the defendant “knew of the patent and that the induced acts constitute patent infringement.” The Commil decision clearly indicates that a mistaken belief of invalidity is not a defense to claims of patent infringement when facing a claim of induced infringement. But it left untouched prior decisions holding that a reasonable belief of non-infringement may constitute a valid defense. The Commil decision suggests that a defendant who reasonably reads a patent’s claims differently from the plaintiff may escape liability for induced infringement.
It will be interesting to see how the Federal Circuit handles this remand because the Commil case did not actually announce any new rules to apply to defenses asserting a reasonable belief of non-infringement. It is likely that the Federal Circuit will use this opportunity to clear up any remaining uncertainty about the level of “knowledge” required for an indirect infringement claim. If the Federal Circuit decides that an “inference” of intent to infringe is not sufficient, it will become much harder for patent owners to establish liability for indirect infringement. Conversely, those who are accused of inducement to infringe may be able to actually rely upon the standard of reasonable belief of non-infringement to protect them. Many will be anxiously awaiting the next decision from the Federal Circuit.