Medtronic, Inc. v. Mark A. Barry
Decided: June 11, 2018
Certain types of spinal surgeries require rigid attachment points to individual vertebrae; to provide these attachment points, specialized screws—called pedicle screws—are typically inserted into one or more of a patient’s vertebrae. Rods or surgical tools are then mounted to the pedicle screws to manipulate the vertebrae, typically by compressing, separating, or rotating them.
Dr. Mark Barry owns two patents—U.S. Patent Nos. 7,670,358 and 7,776,072—on systems and methods for treating scoliosis. Both disclose a surgical tool that engages with groups of pedicle screws to rotate a patient's vertebrae; the patents explain that by spreading the rotational forces over multiple vertebrae, the risk of fracture during the surgical procedure is reduced.
After being sued by Dr. Barry for patent infringement, Medtronic filed IPR petitions to challenge the ‘358 and ‘072 patents, relying on three sources for prior art: US patent application 2005/0245928 (the ‘928 application); a book chapter that appears in the second edition of Masters Techniques in Orthopedic Surgery: the Spine (MTOS); and slides and a video that Medtronic had distributed to groups of spinal surgeons at three industry meetings and conferences in 2003.
In their final written decision, the PTAB rejected Medtronic's challenges based on the ‘928 application and MTOS, explaining that these two references relate to spinal surgeries and techniques in which a patient's vertebrae are either compressed or pulled apart, not rotated as required by Dr. Barry's patents. The Board also refused to consider the Medtronic slides and video presented at the 2003 conferences because these references were not publicly accessible—and therefore not "printed publications" as required by 35 USC § 102.
On appeal, the United States Court of Appeals for the Federal Circuit affirmed the PTAB’s rulings on the prior art ‘928 application and MTOS, noting that both challenged patents are directed to methods and systems for rotating vertebrae by engaging with pedicle screws, one requiring a "derotating tool," and the other "simultaneously rotating" groups of vertebrae. By contrast, the asserted ‘928 application and MTOS prior art references—while also disclosing surgical procedures in which pedicle screws are engaged—are not related to scoliosis treatments, and therefore do not disclose the rotation required by the challenged claims.
The panel then turned to the issue of whether the Medtronic slides and video presented at three relatively small surgical conferences in 2003 were accessible to the public—and therefore "printed publications" within the meaning of 35 USC § 102. The panel explained that under its precedent, a reference is publicly accessible if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence can locate it,” but a printed publication “need not be easily searchable after publication if it was sufficiently disseminated at the time of its publication.”
The Federal Circuit then presented a list of factors that a court or the PTAB must consider when deciding whether materials presented at meetings or conferences are “printed publications.” These include the size and nature of the meetings; whether the meetings are open to people interested in the subject matter of the material disclosed; and whether there is an expectation of confidentiality between the distributor and the recipients of the materials—even if there is no formal, legal obligation of confidentiality.
Because the Board did not consider all of the relevant factors when it rejected the proffered meeting materials as prior art, the Court remanded the issue for further development of the record. *** Click here for the PDF.