Federal Circuit Affirms NuVasive Surgical Patent

June 6, 2016 – On remand from the U.S. Supreme Court, the Federal Circuit affirmed that Warsaw Orthopedic and Medtronic Sofamor Danek USA induced the infringement of NuVasive’s U.S. Patent No. 7,470,236 (“the ’236 patent”).  The ’236 patent is directed to a method for detecting nerves that uses electrical pulses to elicit a nerve response.

The U.S. Supreme Court remanded the case back to the Federal Circuit to determine whether the district court’s judgment of induced infringement was proper in light of an intervening case about those standards, Commil USA, LLC v. Cisco Systems, Inc., 135 S.Ct. 1920 (2015).  The question on remand was whether the jury had sufficient evidence to conclude that Medtronic knew, or should have known, that it was instructing doctors to use its NIM-Eclipse device in a way that infringed the ’236 patent.  Medtronic argued that under the way it construed the claims of the patent, its device did not infringe and it therefore did not know that doctors using the device were infringing the ’236 patent.  The Federal Circuit rejected that argument, saying that Medtronic’s proposed construction is “clearly inconsistent” with the patent and prosecution history, and “amounts to a request for a revised claim construction that it never sought.  That is improper, as we previously ruled in our earlier opinion.”

The case is captioned Warsaw Orthopedic, Inc. v. NuVasive, Inc., in the U.S. Court of Appeals for the Federal Circuit, 2013-1576, -77.

By:  Christopher J. Stankus

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