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

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.

In March of 2015, the Federal Circuit affirmed a jury finding of induced infringement of the '236 Patent. The Supreme Court decided Commil shortly thereafter. MSD subsequently petitioned for certiorari, which the Court granted on Jan. 19, 2016. Id. at 3. In the earlier round, the Federal Circuit “held that substantial evidence supported the jury's finding of direct infringement of claim 1 of the '236 patent by surgeons using MSD's device, the 'NIM-Eclipse.'” (Emphasis added).