Medtronic asks US Supreme Court to vacate infringement ruling

Medical device manufacturer Medtronic has asked the US Supreme Court to vacate a lower court ruling that it indirectly infringed a patent covering a machine used during spinal surgery, citing the latest ruling in Commil USA v Cisco Systems.

In March 2015, the US Court of Appeals for the Federal Circuit held that Medtronic was liable for indirectly infringing US patent number 7,470,236—which is owned by NuVasive and covers a method for monitoring a patient’s nerves during spinal surgery.

In 2012, the US District Court for the Southern District of California had ruled that Medtronic’s sale of its NIM-Eclipse machine indirectly infringed NuVasive’s patent.

Medtronic’s appeal against the decision fell flat after the federal circuit affirmed the ruling, stating that Medtronic was “aware” of the patent and “specifically taught doctors to use the accused product during surgical procedures”.

The company also argued that according to its interpretation of the claims in the asserted patent, its activities were not infringing but the federal circuit failed to address this.

In May, the Supreme Court issued its ruling in the patent dispute between Commil and Cisco, ruling that a good-faith belief that a patent is invalid is not a viable defence against an induced infringement claim.

But the court also said that a party is not liable for indirect infringement if it can demonstrate a “reasonable belief in the non-infringement of patent”.

“Reasonable belief”, according to the court’s ruling, can cover when a party “reads the claims differently from the plaintiff”.

In its Supreme Court submission, dated July 17, Medtronic said: “Prior to Commil, significant debate and uncertainty remained regarding what (if anything) more than knowledge of the patent was required”.

It added: “There is not a shred of evidence that Medtronic knew surgeons using its NIM-Eclipse medical device during spinal surgery would infringe NuVasive’s patent. Quite the opposite. Since first learning of NuVasive’s patent, Medtronic reasonably believed using its NIM-Eclipse device during surgery did not infringe under a proper reading of the patent.

“Medtronic maintained that position throughout the district court proceedings and on appeal to the federal circuit. Under Commil, that should have been enough to defeat NuVasive’s inducement and contributory infringement claims.”

The company concluded that the federal circuit should hear the case again.

Neither Medtronic nor NuVasive had responded to a request for comment at the time of publication, but we will update the story should either company get in touch.