Thursday, January 24, 2019

CAFC explores "public use" in Barry v. Medtronic; Barry wins

Medtronic, represented by SETH P. WAXMAN, Wilmer Cutler Pickering Hale and
Dorr LLP, Washington, DC, lost its appeal at the CAFC:

Medtronic appeals on numerous grounds, principally concerning the public
use and on-sale statutory bars, but also concerning prior
invention, inequitable conduct, and induced infringement
and associated damages. We affirm.

The technology of the patents relate to
methods and systems for correcting spinal column anomalies,
such as those due to scoliosis.

Of public use:

We begin with Medtronic’s argument for judgment as
a matter of law that the ’358 patent’s asserted claims are
invalid under § 102(b)’s statutory bar on patenting of
inventions in “public use” in the United States more than
one year before the application for the patent was filed.
Here, the application was filed on December 30, 2004, so
the critical date for an invalidating domestic public use is
December 30, 2003. We reject Medtronic’s challenge.


This court has long held that “the Supreme Court’s
‘ready for patenting test’” from Pfaff, involving the on-sale
bar, also “applies to the public use bar under § 102(b).”
Invitrogen, 424 F.3d at 1379. Medtronic accepts in this
appeal that, to show readiness for patenting, it had to
show (a) a reduction to practice or (b) drawings or descriptions
enabling an ordinarily skilled artisan to practice the
invention. Pfaff, 525 U.S. at 67–68.4 Here, Medtronic’s
ability to support judgment as a matter of law in its favor
under that test depends on its succeeding under the
reduction-to-practice alternative.


Although the foregoing discussion suffices to affirm
the rejection of Medtronic’s invalidity challenge under
§ 102(b)’s public-use bar, we think it worthwhile to address
Medtronic’s contentions regarding the other element
of the test of invalidity under the public-use bar: whether
the invention was “in public use.” We conclude that
Medtronic also fails under this element.
Medtronic sought to establish this element by showing that the
invention was accessible to the public and
that it was commercially exploited. We conclude, however, that
the evidence permitted a reasonable finding that
Dr. Barry’s ’358 patent invention was not accessible to the
public before the critical date. We also conclude that the
asserted acts of commercial exploitation, namely, the
August and October 2003 surgeries, come within the
experimental-use exception.

Yes, Egbert v. Lippmann is cited:

Unlike in the classic case of Egbert v. Lippmann, 104
U.S. 333, 335 (1881), the inventor here did not relinquish
control of his invention. Dr. Barry was the only one who
actually practiced the invention, i.e., performed the surgery
using the claim-required manipulation of linked
derotators. And while other people were present in the
operating room—an anesthesiologist, two assistant physi-
cians, a scrub technician, a neurophysiologist, a circulating nurse,
and an equipment representative—there was
sufficient evidence for the jury to find facts establishing
that the technique was not accessible to the public
through those people.
The evidence showed that very few of the people in
the operating room had a clear view of the surgical field,
where Dr. Barry was using his invention, because they
were either not permitted near the sterile field or because
there was a drape blocking the view. More dispositively,
although sometimes (as in Egbert) even a limited disclosure can
make an invention accessible to the public, see
Dey 715 F.3d at 1355–56, an accessibility determination
may be rejected where the evidence establishes a sufficient obligation
of confidentiality, which can be implied
rather than express. Id. at 1357; Delano Farms Co. v.
Cal. Table Grape Comm’n, 778 F.3d 1243, 1249 (Fed. Cir.
2015) (“[D]emonstration of a prototype to ‘friends and
colleagues’ was not invalidating because the evidence
supported the existence of ‘a general understanding of
confidentiality.’”); Invitrogen, 424 F.3d at 1381 (“[T]his
court has determined that a use before the critical period
was not public even without an express agreement of


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