Medtronic, Inc. v. Barry
891 F.3d 1368 (2018)
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Rule of Law:
To determine whether a reference distributed at a conference constitutes a "printed publication" under 35 U.S.C. § 102, a court must conduct a case-by-case factual inquiry into its public accessibility, considering factors such as the nature of the meeting, the expertise of the audience, expectations of confidentiality, and the ease with which the material could be copied.
Facts:
- Dr. Mark Barry developed and patented a method and system for correcting aberrant spinal column deviations like scoliosis using a tool designed to apply simultaneous derotational forces to multiple vertebrae.
- Medtronic, Inc. manufactures surgical systems and tools used in spinal surgeries.
- Before Barry's patent, a published patent application (the '928 Application) disclosed a tool for compressing or distracting vertebrae during minimally invasive surgery.
- A book chapter (MTOS) also existed, describing a technique using correcting posts on pedicle screws for spinal derotation, but it did not explicitly teach applying forces simultaneously.
- In 2003, Medtronic distributed a video and a slide presentation depicting derotation surgeries at three separate meetings for spinal surgeons.
- One meeting was for the exclusive "Spinal Deformity Study Group" (SDSG), attended by approximately 20 expert members.
- The other two meetings were sponsored as medical education courses open to other surgeons, with a collective attendance of approximately 75 surgeons.
Procedural Posture:
- Dr. Mark Barry sued Medtronic, Inc. for patent infringement in the U.S. District Court for the Eastern District of Texas (a trial court).
- Medtronic petitioned the U.S. Patent and Trademark Office's Patent Trial and Appeals Board (Board) for inter partes review (IPR) to invalidate Barry's '358 and '072 patents.
- The Board instituted the IPR proceedings.
- In its final written decisions, the Board concluded that Medtronic failed to prove the patent claims were unpatentable.
- The Board determined that the '928 Application and MTOS references did not make the patents obvious and that the Video and Slides were not publicly accessible "printed publications" and thus did not qualify as prior art.
- Medtronic, as petitioner, appealed the Board's decisions to the U.S. Court of Appeals for the Federal Circuit.
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Issue:
Are materials, such as a video and slides, distributed at professional meetings considered publicly accessible "printed publications" under 35 U.S.C. § 102, thus qualifying as prior art, without a full analysis of factors like the nature of the meeting, audience expertise, expectations of confidentiality, and ease of copying?
Opinions:
Majority - Chen, Circuit Judge
No. A determination of whether a reference is a publicly accessible "printed publication" requires a comprehensive, case-by-case inquiry into all relevant facts and circumstances surrounding its disclosure, which the Board failed to conduct. The Board's conclusion that the Video and Slides were not prior art was improperly based solely on the exclusive nature of one meeting, while ignoring their distribution at two other, more open conferences. The court reaffirmed the multi-factor test from In re Klopfenstein, which requires consideration of: 1) the length of time the material was displayed, 2) the expertise of the target audience, 3) the existence of reasonable expectations of confidentiality, and 4) the ease with which the material could be copied. Because the Board did not fully analyze these factors, particularly regarding expectations of confidentiality and the different nature of the three meetings, its decision on this issue is vacated and remanded for further proceedings. The court, however, affirmed the Board's finding that the '928 Application and MTOS references did not render the patents obvious, as substantial evidence supported the conclusion that they did not teach the key limitations of the patents.
Analysis:
This decision reinforces the fact-intensive nature of the "printed publication" analysis under patent law, particularly for disclosures made in non-traditional settings like conferences. It clarifies that no single factor, such as the exclusivity of an audience, is dispositive. By mandating a holistic review of all circumstances, including the nature of different distribution events and expectations of confidentiality, the court sets a higher bar for administrative bodies and lower courts to justify their conclusions. This precedent provides a clear analytical roadmap for future cases involving challenges to patents based on materials distributed at meetings, seminars, or symposia, impacting how companies and inventors manage disclosures in such forums.
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