Addressing whether the distribution of certain materials at one or more meetings renders such materials printed publications under 35 USC § 102(b), the US Court of Appeals for the Federal Circuit vacated a Patent Trial and Appeal Board (PTAB) decision that certain video and slides distributed to specific groups of people at meetings were not admissible as prior art because they were not "sufficiently accessible to the public." Medtronic, Inc. v. Mark A. Barry, Case No. 2017-1169 (Fed. Cir., June 11, 2018) (Chen, J).
Medtronic manufactures surgical systems and tools used in spinal surgeries. Dr. Mark Barry owns patents directed to methods for ameliorating aberrant spinal column deviation conditions. Dr. Barry sued Medtronic for patent infringement, alleging that Medtronic's products infringed several of his patents relating to spinal tools and systems. In response, Medtronic petitioned for inter partes review (IPR) proceedings, claiming that Dr. Barry's patents were obvious in view of the following:
- A prior art US patent
- A chapter in a book entitled Masters Techniques in Orthopaedic Surgery: The Spine (2d ed.)
- 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" that had been distributed at a meeting of the Spinal Deformity Study Group (SDSG) in Arizona
The PTAB instituted IPR proceedings and found that the challenged claims would not have been obvious over the prior art US patent and book chapter, and that the video and slides did not qualify as prior art publications against Dr. Barry's patents because they were not "sufficiently accessible to the public." Medtronic appealed.
On appeal, the parties mainly disputed whether the video and slides constituted prior art printed publications within the meaning of 35 USC § 102(b). Medtronic argued that the PTAB erred in assuming that that since the video and slides were distributed only to members of the SDSG, they were not "sufficiently accessible." Dr. Barry countered that since the video and slides were only available to a limited group of experts, they were not "publicly accessible."
The Federal Circuit vacated the PTAB's decision, finding that whether a distribution renders the materials printed publications under 35 USC § 102(b) depends upon "the size and nature of the meetings and whether they 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." In vacating the PTAB's finding that the videos and slides were not "sufficiently accessible to the public," the Federal Circuit noted that the PTAB failed to fully consider all of the relevant factors, particularly with respect to the potentially critical difference between events where the materials were distributed, including the SDSG meeting in Arizona and programs in Colorado Springs and St. Louis, which were not limited to members of the SDSG. In particular, the PTAB failed to address whether the disclosures of materials at the programs in Colorado Springs and St. Louis would remain confidential.
Remanding the case for further proceedings, the Federal Circuit held that
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.
Practice Note: When distributing information relating to a concept for which one hopes to eventually seek patent protection, the utmost care must be exercised to restrict who receives the information, and expectations of confidentiality must be made clear from the outset.
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