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Warsaw Orthopedic, Inc. v. NuVasive, Inc.

United States Court of Appeals for the Federal Circuit

June 3, 2016, Decided

2013-1576, 2013-1577


 [*1346]  [***1793]   Dyk, Circuit Judge.

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, 191 L. Ed. 2d 883 (2015)]." Medtronic Sofamor Danek USA, Inc. v. NuVasive, Inc., 136 S. Ct. 893, 193 L. Ed. 2d 785 (2016) (Mem.). On remand, [**2]  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.


The vacated decision, Warsaw Orthopedic, Inc. v. NuVasive, Inc., 778 F.3d 1365 (Fed. Cir. 2015), began as a patent infringement suit by Warsaw Orthopedic, Inc. and a related company, Medtronic Sofamor Danek USA, Inc., ("MSD")1 against NuVasive, Inc. ("NuVasive"). NuVasive counterclaimed for infringement of its patent, U.S. Patent No. 7,470,236 ("the '236 patent"). Only our decision with respect to the '236 patent is affected by the Supreme Court's remand. That aspect of our decision affirmed a jury verdict of infringement, holding that the asserted claims of NuVasive's '236 patent were directly infringed by users of MSD's "NIM-Eclipse" device and that MSD induced this infringement. Id. at 1369, 1373, 1379.

Our opinion issued on March 2, 2015. The Supreme Court decided Commil shortly thereafter, on May 26, 2015. 135 S. Ct. at 1920. MSD subsequently petitioned for certiorari in this case, requesting that the Court grant certiorari, vacate, and remand ("GVR") on the basis that our court did not correctly apply the test for induced infringement under 35 U.S.C. § 271(b) articulated in Commil and the  [*1347]  Court's earlier decision in Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 131 S. Ct. 2060, 179 L. Ed. 2d 1167 (2011). MSD contended that while [**3]  the jury had been properly instructed as to the standard of induced infringement set out in Commil, NuVasive had failed to prove that MSD had the requisite knowledge to induce infringement. MSD did not raise any issue concerning a belief in patent invalidity, the Supreme Court in Commil having held that a belief in patent invalidity is not a defense to inducement. 135 S. Ct. at 1928. The Supreme Court granted certiorari and issued its GVR order on January 19, 2016.

We recalled our mandate and reopened the case on March 3, 2016. We requested supplemental briefing from MSD and NuVasive on  [***1794]  "the question of what action this court should take on remand from the Supreme Court 'for further consideration in light of Commil . . . .'" March 2, 2016, Order, ECF No. 93. We now consider what action is appropriate in this case in light of the Supreme Court's remand.

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824 F.3d 1344 *; 2016 U.S. App. LEXIS 10092 **; 118 U.S.P.Q.2D (BNA) 1792 ***

WARSAW ORTHOPEDIC, INC., Plaintiff/Counterclaim Defendant-Appellant MEDTRONIC SOFAMOR DANEK USA, INC., Counterclaim Defendant-Appellant MEDTRONIC PUERTO RICO OPERATIONS CO., MEDTRONIC SOFAMOR DANEK DEGGENDORF, GMBH, Counterclaim Defendants v. NUVASIVE, INC., Defendant/Counterclaimant-Cross-Appellant

Subsequent History: Stay granted by Warsaw Orthopedic, Inc. v. Nuvasive, Inc., 2016 U.S. Dist. LEXIS 113913 (S.D. Cal., June 15, 2016)

Prior History:  [**1] Appeals from the United States District Court for the Southern District of California in No. 08-CV-1512, Judge Cathy Ann Bencivengo.

Warsaw Orthopedic, Inc. v. NuVasive, Inc., 2013 U.S. Dist. LEXIS 189137 (S.D. Cal., June 10, 2013)Warsaw Orthopedic, Inc. v. NuVasive, Inc., 778 F.3d 1365, 2015 U.S. App. LEXIS 3133 (Fed. Cir., 2015)


infringement, signal, stimulus, stopping, induced, nerve, neuromuscular, eliciting, patent, electrical, stimulation, emission, detected, emitted, pulses, blind, willfully, circumstantial evidence, predetermined, reasonable jury, district court

Business & Corporate Compliance, Infringement Actions, Infringing Acts, Indirect Infringement, Evidence, Types of Evidence, Circumstantial Evidence, Inferences & Presumptions, Inferences, Patent Law, Claim Interpretation, Fact & Law Issues