Medtronic, Inc. v. Barry, Case No. 2017-1169 (Fed. Cir. June 11, 2018)

In MEDTRONIC, INC. v. BARRY, Case No. 2017-1169 (Fed. Cir. June 11, 2018), the Federal Circuit explained the factors relevant to determining whether videos and slides, which were distributed at a conference, qualify as “printed publications” within the meaning of 35 U.S.C. 102(b).

In this case, Medtronic manufactured surgical systems and tools used in spinal surgeries, and Spine surgeon Dr. Mark Barry sued Medtronic for patent infringement. Medtronic then petitioned for, and the Board instituted, an IPR proceeding. In particular, Medtronic challenged the claims on the basis that they would have been obvious over the combination of prior art including the Video and Slides distributed by Medtronic at various industry meetings and conferences.

The Board found that the Video and Slides were not publicly accessible and therefore were not “printed publications,” in accordance with 35 U.S.C. § 102. As a result, the Board, in its final decisions, refused to consider these materials as prior art in its evaluation of the patent.

Thus, the issue on appeal was whether the Video and Slides constitute printed publications within the meaning of 35 U.S.C. § 102(b).

The Federal Circuit found that ‘public accessibility’ has been called the touchstone in determining whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C. § 102(b). In particular, the Federal Circuit indicated that 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. Since the parties here did not allege that the Video and Slides were stored somewhere for public access after the conferences, the Federal Circuit stated that the question becomes whether such materials were sufficiently disseminated at the time of their distribution at the conferences.

Interestingly, the expectation of confidentiality between the distributor and attendees is a key consideration in determining whether presentation materials constitute printed publications within the meaning of 35 U.S.C. § 102(b) when the presentation materials were distributed during seminars.

The Federal Circuit opined that the following factors should be considered when the presentation materials were not distributed to attendees, but were shown to attendees during seminars.

(1) “the length of time the display was exhibited,” (2) “the expertise of the target audience” (to determine how easily those who viewed the material could retain the information), (3) “the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied,” and (4) “the simplicity or ease with which the material displayed could have been copied

The Federal Circuit found that the record does not show that the Board fully considered all of the relevant factors, and thus vacated the Board’s finding that the Video and Slides are not printed publications and remand for further proceedings consistent with this opinion.