Medtronic, Inc. v. Barry
891 F.3d 1368
| Fed. Cir. | 2018Background
- Medtronic petitioned for inter partes review (IPR) of claims in Barry’s U.S. Pat. Nos. 7,670,358 (ʼ358) and 7,776,072 (ʼ072); the Patent Trial and Appeals Board (Board) concluded Medtronic failed to prove unpatentability for the challenged claims.
- The ʼ358 patent claims a method using a linked cluster derotation tool that, by grasping a single handle means, "in a single motion simultaneously rotat[e]" multiple vertebrae (the "Simultaneously Rotating" limitation).
- The ʼ072 patent claims a system including a derotation tool with a handle means that facilitates "simultaneous" application of manipulative forces to three or more pedicle screws (the "Derotation Tool" limitation).
- Relevant prior art relied on by Medtronic: U.S. Patent Application 2005/0245928 (the ʼ928 Application) disclosing a percutaneous compression/distraction device operated by separate knobs; a Masters Techniques in Orthopaedic Surgery chapter (MTOS) describing pedicle-screw correcting posts and apical vertebral derotation maneuvers; and a 2003 Video and Slides (distributed at three meetings) depicting derotation surgeries.
- The Board found the ʼ928 Application and MTOS (alone or combined) did not disclose the claimed simultaneous derotation features, and it also found the Video and Slides were not publicly accessible printed publications. The Federal Circuit affirmed as to the ʼ928 and MTOS findings but vacated and remanded the Board’s determination on public accessibility of the Video and Slides for further factfinding.
Issues
| Issue | Medtronic (Petitioner) Argument | Barry (Patent Owner) Argument | Held |
|---|---|---|---|
| Whether the ʼ928 Application alone renders the ʼ358 claims obvious (Simultaneously Rotating limitation) | ʼ928 teaches a device that could be grabbed and pushed/pulled to derotate multiple vertebrae in one motion | ʼ928 discloses separate knob-driven motions for compression/distraction, not single-motion simultaneous derotation | Affirmed: substantial evidence ʼ928 does not disclose or render obvious the single-motion simultaneous derotation |
| Whether combining ʼ928 and MTOS renders ʼ358 claims obvious | MTOS shows correcting posts and AVD maneuvers; combining with ʼ928 would yield simultaneous derotation and motivation to combine | MTOS teaches open procedures and does not disclose a single handle means or explicit simultaneous manipulation; differences in use and context undermine combination | Affirmed: substantial evidence supports no obviousness from ʼ928+MTOS combination |
| Whether ʼ072 claims (Derotation Tool limitation) are obvious over same prior art | Prior art discloses tools/procedures that perform derotation; combination would yield a handle that moves multiple engagement members simultaneously | Prior art does not disclose a handle means configured to move engagement members simultaneously or a derotation tool as claimed | Affirmed: substantial evidence that the combination does not disclose the claimed derotation tool |
| Whether the Video and Slides distributed at 2003 meetings are printed publications under §102(b) (public accessibility) | Materials were distributed at three programs (two open to other surgeons) without restriction; thus they are publicly accessible prior art | Distribution to a limited, expert-only group (SDSG) supports non-publication; expertise and exclusivity can counsel against public accessibility | Vacated and remanded: Board failed to consider all public-accessibility factors (differences among meetings, expectations of confidentiality, dissemination at two non-SDSG programs). Further factfinding required |
Key Cases Cited
- Ethicon Endo-Surgery, Inc. v. Covidien LP, 812 F.3d 1023 (Fed. Cir.) (standard of review: Board legal conclusions de novo, factual findings for substantial evidence)
- In re Applied Materials, Inc., 692 F.3d 1289 (Fed. Cir.) (definition of substantial evidence)
- Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358 (Fed. Cir.) (public accessibility case-by-case inquiry; dissemination can suffice even without indexing)
- Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374 (Fed. Cir.) (purpose of printed-publication bar)
- Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir.) (public accessibility as touchstone; what interested and ordinarily skilled persons can locate)
- In re Klopfenstein, 380 F.3d 1345 (Fed. Cir.) (factors for conference-distributed materials: duration, audience expertise, expectation of copying/confidentiality, ease of copying)
- Massachusetts Inst. of Tech. v. AB Fortia, 774 F.2d 1104 (Fed. Cir.) (oral presentation and unrestricted distribution at conference can be a printed publication)
- Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319 (Fed. Cir.) (confidential academic or limited disclosures may not be publicly accessible)
- In re Hall, 781 F.2d 897 (Fed. Cir.) (public accessibility and printed publication principles)
- Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340 (Fed. Cir.) (definition of what makes a reference locatable by interested, ordinarily skilled persons)