Monday, June 11, 2018

CAFC addresses "videos as prior art" in the precedential Medtronic v. Barry

From the beginning of the decision:

This is a consolidated appeal from two related decisions
of the U.S. Patent and Trademark Office’s Patent
Trial and Appeals Board (Board) in inter partes review
(IPR) proceedings. The Board concluded that the petitioner,
Medtronic, Inc., had not proven that the challenged
patent claims are unpatentable.
We affirm-in-part and vacate-in-part. Substantial evidence
supports the Board’s determination that the challenged
claims would not have been obvious over two
references: 1) U.S. Patent Application No. 2005/0245928
(the ’928 Application); and (2) a book chapter which
appears in Masters Techniques in Orthopaedic Surgery:
The Spine (2d ed.) (MTOS). However, we vacate the
Board’s conclusion that certain other references, i.e., a
video entitled “Thoracic Pedicle Screws for Idiopathic
Scoliosis” and slides entitled “Free Hand Thoracic Screw
Placement and Clinical Use in Scoliosis and Kyphosis
Surgery” (Video and Slides), were not prior art because
the Board did not fully consider all the factors for determining
whether the Video and Slides were publicly accessible.
We thus remand for further proceedings.

The art in question:

Medtronic distributed a video demonstration and a related
slide presentation to spinal surgeons at various
industry meetings and conferences in 2003. J.A. 1719–57.
These video and slide sets depict derotation surgeries that
use pedicle screws and other instrumentation to correct
scoliosis. J.A. 1467–72. The Video consists of a narrated
derotation surgery performed in 2001 by Dr. Lenke, who
testified as Medtronic’s expert in this case. J.A. 1467–70.
The Slides include information about the use of pedicle
screws in derotation surgeries, including numerous pictures
from surgeries performed and x-rays of preoperative
and post-operative spines. J.A. 1735–49. The
Board found that the Video and Slides, although presented
at three different meetings in 2003, were not publicly
accessible and therefore were not “printed publications,”
in accordance with 35 U.S.C. § 102.2 As a result, the
Board, in its final decisions, refused to consider these
materials as prior art in its evaluation of the ’358 and ’072


A CD containing the Video was distributed at three
separate programs in 2003: (1) a meeting of the “Spinal
Deformity Study Group” (SDSG) in Scottsdale, Arizona,
on April 10–13, 2003 (the Scottsdale program); (2) the
Advanced Concepts in Spinal Deformity Surgery meeting
in Colorado Springs, Colorado, on May 18–19, 2003 (the
Colorado Springs program); and (3) the Spinal Deformity
Study Symposium meeting in St. Louis, Missouri, on
November 13–15, 2003 (the St. Louis program). J.A.
2651–52, 2667–67. Binders containing relevant portions
of the Slides were also distributed at the Colorado Springs
and St. Louis programs. J.A. 2667, 4633.
The earliest of the three 2003 programs, the Scottsdale
program, was limited to SDSG members. J.A. 5904–
09. Medtronic’s witness, David Poley, described SDSG as
“a gathering of experts within the field of spinal deformity.”
J.A. 5904. About 20 SDSG members attended the
Scottsdale program. J.A. 2651. The other two programs
were open to other surgeons. J.A. 2668. Medtronic sponsored
these programs as medical education courses. J.A.
2666. Approximately 20 and 55 surgeons attended the
Colorado Springs and St. Louis programs, respectively.
J.A. 2667–68, 4633.

Medtronic argues that the Board committed legal error
in concluding that the Video and Slides were not
sufficiently accessible to the public. According to Medtronic,
the Board’s sole basis for this conclusion rested on
its faulty assumption that the materials were distributed
only to members of the SDSG. See J.A. 12–13. Medtronic
points out two problems with this assumption. First, it
argues that the Board improperly ignored evidence that
the Video and Slides were distributed at programs that
were not limited to SDSG members. Second, Medtronic
contends that, even if the assumption were correct, a
reference need only be accessible to the “interested public”
to satisfy the public accessibility requirement, and that,
members of the SDSG fall squarely within that category.
According to Barry, the Board correctly found that
“members of the Spinal Deformity Study Group, who
received the Video and Slides, were experts voted into
membership by an executive board based on their qualifications
and ability to conduct research.” J.A. 12. Because
the slides were only available to experts who are part of a
group limited to members only, and not those of ordinary
skill, Barry argues that the Video and Slides were not
publicly accessible to ordinarily skilled artisans.
Whether a reference qualifies as a “printed publication”
is a legal conclusion based on underlying factual
determinations. Suffolk Techs., LLC v. AOL Inc., 752
F.3d 1358, 1364 (Fed. Cir. 2014) (citation omitted).

Note footnote 2:

Because the claims at issue in this case have effective
filing dates before March 16, 2013, we apply the
pre-AIA § 102

The CAFC observed:

The determination of whether a document is a “printed
publication” under 35 U.S.C. § 102(b) “involves a caseby-case
inquiry into the facts and circumstances surrounding
the reference’s disclosure to members of the
public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir.
2004). “Because there are many ways in which a reference
may be disseminated to the interested public, ‘public
accessibility’ has been called the touchstone in determining
whether a reference constitutes a ‘printed publication’
bar under 35 U.S.C. § 102(b).” Blue Calypso, 815 F.3d at
1348 (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir.
1986)). “A reference will be considered 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.’” Id. (quoting Kyocera Wireless Corp. v. Int’l
Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008)).

The issue of a reference’s public accessibility often
arises in the context of references stored in libraries. In
such cases, we generally inquire whether the reference
was sufficiently indexed or cataloged. Id. Here, we
encounter a different question: whether the distribution of
certain materials to groups of people at one or more
meetings renders such materials printed publications
under § 102(b). We have stated that a printed publication
“need not be easily searchable after publication if it was
sufficiently disseminated at the time of its publication.”
Suffolk Techs., 752 F.3d at 1365 (concluding that an
electronic newsgroup post was sufficiently disseminated
where the newsgroup was populated by those of ordinary
skill in the art and “dialogue with the intended audience
was the entire purpose of the newsgroup postings,” even
though the post was non-indexed and non-searchable).
The parties here do not allege that the Video and Slides
were stored somewhere for public access after the conferences.
Thus, the question becomes whether such materials
were sufficiently disseminated at the time of their
distribution at the conferences. A survey of previous
cases involving distribution of materials at meetings
provides factors relevant to this case.
For example, in Massachusetts Institute of Technology
v. AB Fortia (MIT), a paper that was orally presented at a
conference to a group of cell culturists interested in the
subject matter was considered a “printed publication.”
774 F.2d 1104, 1109 (Fed. Cir. 1985). In that case, between
50 and 500 persons having ordinary skill in the art
were told of the existence of the paper and informed of its
contents by the oral presentation. Id. at 1109. We took
note that the document itself was disseminated without
restriction to at least six persons. Id. at 1108–09. Thus,
whether the copies were freely distributed to interested
members of the public was a key consideration in our

The CAFC found the Board's analysis incomplete:

The record does not show that the Board fully considered
all of the relevant factors. As a threshold matter, the
Board did not address the potentially-critical difference
between the SDSG meeting in Arizona and the programs
in Colorado Springs and St. Louis, which were not limited
to members of the SDSG but instead were attended by at
least 75 other surgeons, collectively. J.A. 2668. Also,
Medtronic’s expert, Dr. Lenke, testified that the materials
were distributed without restrictions at the Colorado
Springs and St. Louis programs. J.A. 1467–68, 3002.
Although the Board found that disclosure to a small group
of experts in the members-only SDSG meeting was insufficient
to compel a finding that the Video and Slides were
publicly available, its analysis was silent on the distribution
that occurred in the two non-SDSG programs.

Further, even if the Board were correct in its assumption
that Medtronic only gave the Video and Slides to the
SDSG members, it did not address whether the disclosures
would remain confidential. The Board found that
SDSG members were experts voted into membership by
an executive board based on their qualifications and
research, but the relatively exclusive nature of the SDSG
membership is only one factor in the public accessibility
analysis. It may be relevant, for example, to consider the
purpose of the meetings and to determine whether the
SDSG members were expected to maintain the confidentiality
of received materials or would be permitted to
share or even publicize the insights gained and materials
collected at the meetings. See, e.g., J.A. 4153 (stating that
the materials were distributed at the SDSG meeting
without restriction or obligation of confidentiality).

Accordingly, whether dissemination of the Video and
Slides to a set of supremely-skilled experts in a technical
field precludes finding such materials to be printed publications
warrants further development in the record. The
expertise of the target audience can be a factor in determining
public accessibility. See In re Klopfenstein, 380
F.3d at 1350–51 (“The expertise of the intended audience
can help determine how easily those who viewed it could
retain the displayed material.”). But this factor alone is
not dispositive of the inquiry. Distributing materials to a
group of experts, does not, without further basis, render
those materials publicly accessible or inaccessible, simply
by virtue of the relative expertise of the recipients. The
nature of those meetings, as well as any restrictions on
public disclosures, expectations of confidentiality, or,
alternatively, expectations of sharing the information
gained, can bear important weight in the overall inquiry.
For these reasons, we vacate the Board’s finding that
the Video and Slides are not printed publications and
remand for further proceedings consistent with this


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