In Medtronic, Inc. v. Barry (2017-1169 and 2017-1170), the Federal Circuit (Circuit Judges Taranto, Plager, and Chen, decision authored by Judge Chen, hereinafter “the panel”) vacated the PTAB’s finding in IPRs2015-00780 and -00783 that Medtronic’s slides and videos constitute “printed publications” within the meaning of 35 U.S.C. §102(b). Since only patents and printed publications are eligible as prior art in inter partes review (“IPR”), the question whether non-patent literature (“NPL”) such as slides and videos distributed at a conference constitute printed publications is clearly of interest to those in the medical device field.

The panel’s survey of prior cases involving distribution of meeting materials and similar NPL provides useful guidance for the PTAB, district courts, the ITC, and its litigants as to the factors to be considered when determining public accessibility of NPL. Maybe more interesting, however, is recognizing that Medtronic’s reliance on the video and slides in the IPR came with little risk other than the restrictive impact of issue preclusion on a subsequent opportunity to re-litigate the issue of confidentiality. That is, even if unsuccessful at the PTAB, the limited scope of estoppel in IPR (35 U.S.C. §315(e)(2)) would not prevent a petitioner such as Medtronic from repurposing the slides and videos for use in another proceeding or civil action as evidence of prior art under 35 U.S.C. §102(a)(“known by others”) or §102(g)(“made in this country by another inventor”).

As reported in the decision, Medtronic distributed a video demonstration and a related slide presentation to spinal surgeons at various industry meetings and conferences in 2003. The

PTAB found that the video and slides, although presented at three different meetings in 2003, were not publicly accessible and therefore were not “printed publications.” As a result, the PTAB refused to consider the merits of the video and slides as prior art.

In the Federal Circuit decision, the survey of relevant cases included a discussion of Massachusetts Institute of Technology v. AB Fortia, 774 F.2d 1104, 1109 (Fed. Cir. 1985) (whether the subject papers were freely distributed to members of the public is a key consideration), Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319 (Fed. Cir. 2009) (record contained clear evidence that the academic norms gave rise to an expectation that disclosures would remain confidential), and In re Klopfenstein, 380 F.3d 1345 (Fed. Cir.2004) (concerning a printed slide presentation shown with no stated expectation that the information would not be copied or reproduced). Those prior decisions were synthesized by the panel resulting in the following guidance:

Another factor is 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, it still may be relevant to determine whether any policies or practices associated with a particular group meeting would give rise to an expectation that disclosures would remain confidential. {Emphasis added.}

Interestingly, and likely to the PTAB’s chagrin, the panel concluded:

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… 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. {Emphasis added.}

Since the IPR record reflects that the public accessibility issue has already been litigated, it is noteworthy whether the PTAB will require additional briefing supported by declaration[s] on issues such as whether there was an expectation of confidentiality at the respective medical conferences. Expect the PTAB in the future to avoid this outcome, requiring petitioners to carry this burden in the petition.