Barry v. Medtronic, Inc.
914 F.3d 1310
Fed. Cir.2019Background
- Dr. Mark Barry invented and patented (’358 and later ’121) methods/systems for derotating multiple vertebrae simultaneously using linked pedicle-screw derotation tools and rods; application for the ’358 patent was filed December 30, 2004 (critical date Dec. 30, 2003).
- Barry performed three surgeries in Aug–Oct 2003 using linked-derotator techniques, followed patients for months, and filed an abstract Feb. 2004 and the ’358 application Dec. 30, 2004.
- Medtronic marketed a Vertebral Column Manipulation (VCM) kit (2006) and trained surgeons; Barry alleged Medtronic induced infringement of the asserted claims of both patents and obtained a jury verdict and damages (over $17M domestic awards combined).
- Medtronic challenged (post-trial and on appeal) validity of the ’358 claims under 35 U.S.C. § 102(b) (public-use and on‑sale bars) and § 102(g) (prior invention by Dr. Lenke), inequitable conduct, and inducement/damages; district court and jury rejected those defenses; Federal Circuit affirmed.
- Key factual disputes: (1) whether Barry’s pre‑critical‑date surgeries made the invention “ready for patenting” or were public/commercial uses, or instead experimental, and (2) whether Medtronic (or Dr. Lenke) had prior invention; also theory of inducement rested on surgeon use evidence (Neal survey) and Medtronic training/instructions.
Issues
| Issue | Plaintiff's Argument (Barry) | Defendant's Argument (Medtronic) | Held |
|---|---|---|---|
| §102(b) public-use/on-sale bar for ’358 | Surgeries were experimental; invention not "ready for patenting" before critical date; no public accessibility | Surgeries (and related communications) were public/commercial uses/on sale before critical date and showed the invention worked | The court affirmed: jury reasonably found not ready for patenting and that the pre‑critical‑date uses were experimental/not publicly accessible—§102(b) defense fails |
| §102(g) prior inventor (Dr. Lenke) | Barry: substantial evidence he reduced to practice prior to Lenke; jury credited Barry | Medtronic: Lenke worked earlier and thus was prior inventor | Affirmed: substantial evidence supported jury finding that Lenke did not reduce to practice before Barry |
| Inequitable conduct re: incorrect Figure 6 description | Barry: error was inadvertent, corrected once discovered; no intent to deceive | Medtronic: misdescription of Figure 6 was material and indicative of intent to deceive PTO | Affirmed: district court’s credibility findings not clearly erroneous; no inequitable conduct proved (court did not reach materiality) |
| Induced infringement and damages | Barry: Medtronic provided instructions/training and VCM kit use induced surgeon direct infringement; Neal survey and other evidence support scope and post‑issuance inducement/damages | Medtronic: survey unreliable/insufficient; inducement required evidence of post‑issuance knowing intent and direct infringement by surgeons | Affirmed: substantial evidence supported direct infringement by surgeons and inducement (including post‑issuance), and district court properly admitted and weighed the Neal survey; damages upheld |
Key Cases Cited
- Polara Eng’g Inc. v. Campbell Co., 894 F.3d 1339 (Fed. Cir.) (defining public‑use/experimental‑use principles and reviewing jury verdicts for substantial evidence)
- Pfaff v. Wells Elecs., Inc., 525 U.S. 55 (U.S.) (on‑sale/public‑use test: invention must be "ready for patenting" and subject to commercial offer/use to trigger §102(b))
- Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374 (Fed. Cir.) (application of Pfaff test to public‑use bar and overlap with experimental‑use inquiry)
- New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290 (Fed. Cir.) (experimental‑use exception negates public‑use bar)
- EZ Dock, Inc. v. Schafer Sys., Inc., 276 F.3d 1347 (Fed. Cir.) (experimental‑use factors and ready‑for‑patenting analysis)
- Electromotive Div. v. Transp. Sys. Div. of Gen. Elec. Co., 417 F.3d 1203 (Fed. Cir.) (analysis distinguishing commercial sale vs. experimental use; objective indicia important)
- TP Labs., Inc. v. Professional Positioners, Inc., 724 F.2d 965 (Fed. Cir.) (medical procedures may require follow‑up to determine invention works; experimental‑use discussion)
- Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir.) (inequitable‑conduct standard: materiality plus intent)
- City of Elizabeth v. American Nicholson Pavement Co., 97 U.S. 126 (U.S.) (historical authority recognizing experimental use and testing durability as justification for pre‑filing public use)