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Federal Circuit Applies a Reasonableness Standard to the Knowledge of Infringement Prong

By Matthew Siegal and Mord M. Lewis

On vacatur and remand from the Supreme Court in light of Commil USA, LLC v. Cisco Sys., Inc., 135 S. Ct. 1920 (2015), the Federal Circuit reaffirmed that defendant Medtronic Sofamor Danek USA, Inc. (MSD) induced infringement of U.S. Patent No. 7,470,236 (“the '236 Patent”) to NuVasive, Inc., because its belief of non-infringement was unreasonable. The decision highlights the tension faced by alleged infringers, who must balance invalidity issues where a broad construction is desirable, against non-infringement issues, where narrow constructions are desired.

Proving induced infringement requires proof that the defendant knew the induced acts were infringing. See, Warsaw Orthopedic, Inc. v. NuVasive, Inc., Nos. 2013-1576, 2013-1577, slip op. at 4 (Fed. Cir. June 3, 2016) (internal citations omitted). MSD argued that it could not be an infringement inducer, because it believed its method was non-infringing. However, the Federal Circuit ruled that this belief was “objectively unreasonable,” in part because it conflicted with MSD's Markman position. In his concurrence, Judge Renya expressed his concern regarding how a jury is supposed to assess the reasonableness of a claim interpretation position if it is excluded from the entire Markman proceeding.

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