By Gabriella Chan
On June 11, 2018 the United States Federal Court of Appeals (the “Court”) heard the case of Medtronic Inc. v. Mark Barry. Medtronic is a global manufacturer of various medical devices including spinal surgery tools and devices. Spinal surgeon Dr. Mark Barry sued Medtronic, alleging that some Medtronic products infringed a group of his patents that were directed to methods of improving spinal column deviations using pedicle screws to correct conditions such as scoliosis.
Medtronic sought to disprove infringement by alleging that Barry’s inventions were not patentable because they were anticipated by Medtronic’s prior art. Medtronic cited one of its own patents as prior art against Dr. Barry ’s patents, as well as a video demonstration and a slide presentation of de-rotation surgeries, including with pedicle screws, to correct scoliosis (the “Materials”). Medtronic first presented the Materials to 20 spinal deformity experts at a Spinal Deformity Study Group (“SDSG”) meeting in Scottsdale as part of Medtronic’s sponsorship of medical education courses at industry meetings and conferences. It subsequently presented the Materials at two additional conferences; the first in Colorado Springs, attended by 20 SDGS surgeons, and the second in St. Louis, attended by 55 SDSG surgeons. Notably, at least 75 non-SDSG surgeons also attended the Colorado Springs and the St. Louis meetings.
Medtronic initiated Inter Partes Review (IPR) proceedings against Barry’s patents though the U.S. Patent and Trade Mark Office’s Patent Trail and Appeals Board (the “Board”). The Board determined that the Materials were not prior art citable against Barry because they were not ‘publicly accessible’, and therefore were not ‘printed publications’. While an inventor who disclosed un-protected material at a conference would have been elated with this determination, Medtronic, wishing to invalidate Barry’s patents, hoped for the opposite result so it sued Barry in Court. Medtronic argued that Barry’s patents were invalid because, while the Scottsdale disclosure of the Materials may not have been to the public, its disclosure of the Materials at the Colorado Springs and St. Louis meetings did constitute a public disclosure and the Materials were publicly accessible. Therefore, the questions before the court were whether (i) the distribution of certain materials to groups of people at one or more meetings renders such materials printed publications and (ii) the materials were sufficiently disseminated at the time they were distributed at the two conferences to have been made available to the public.
The crux of the prior art evaluation analysis depends, subject to some exclusions, on whether the Materials became public before the date on which the patent application for the invention was filed. Section 102(b) of 35 USC requires that an invention must not have been (i) described in a printed publication, (ii) in public use, (iii) offered for sale, or (iv) otherwise available to the public. Similarly, section 28.2(1) of Canada’s Patent Act, requires that a patentable invention must not have become “available to the public in Canada or elsewhere”.
To determine whether a piece of prior art (also referred to by the courts as a reference) is a printed publication requires a legal exercise based on the underlying facts and the circumstances under which the reference was allegedly disclosed to the public. The courts have used ‘public accessibility’ as a proxy to determine whether the dissemination of a reference constitutes a printed publication (re Hall, Fed. Cir. 1986).
In this case, the Court determined that the Board did not address the potentially critical difference between the SDSG meeting in Scottsdale and the conferences in Colorado Springs and St. Louis so it remanded the case to the Board for re–evaluation. The Board must now determine whether the dissemination of the Materials to a set of “supremely-skilled experts in a technical field precludes finding such materials to be printed publications and were publicly accessible”. In its re-evaluation, the Board must determine whether the Materials were published without restrictions at the Colorado Springs and St. Louis meetings and whether the SDGS members were expected to maintain the confidentiality of the Materials or whether they were permitted to share or publicize the Materials and the insights they may have gained at the meetings. In addition, the Board must treat the relatively exclusive nature of the SDSG membership as only one factor in the public accessibility analysis and it must consider the purpose of the meetings.
By way of a review of other factors to be considered in a prior art analysis, the Medtronic Court reiterated that a printed publication need not be easily searchable after publication if it was sufficiently disseminated at the time it was published. Divulging the existence of a paper, and then proceeding to inform a captive group of persons of ordinary skill in the art of its contents in an oral presentation, can be a factor in determining public accessibility. Similarly, although not dispositive of the inquiry, the length of time any material is exhibited, the ease with which the material presented or displayed could have been copied, and the expertise of the intended audience can help determine how easily those who viewed the material could retain it.
Additional analysis factors include the presence or absence of an expectation of confidentiality between the presenter and the audience. Importantly, even without a formal notice or requirement of confidentiality, such as “Confidential” marking or a non-disclosure agreement, the Court noted that one must still determine whether any policies or practices associated with a particular meeting, or any academic or professional norms, may give rise to an expectation that a disclosure would remain confidential.
Although this case outlines a few potentially exculpatory factors against a finding of public disclosure, if inventors themselves were to disclose the information, they may avail themselves of the applicable grace period in a few jurisdictions. However, the grace period is no saving grace in a first to file jurisdiction if a third-party were to race to the patent office to file an application before the inventors do. Using the facts of this case as a hypothetical example, if Barry learned about the use of pedicle screws at Medtronic’s first conference, then filed patent applications for a Medtronic invention in his name and applying the Board’s finding that Medtronic’s Materials did not constitute prior art against Barry’s patents means that Barry’s patents stand. As the Medtronic case demonstrates, an inventor’s disclosure at a meeting may or may not constitute prior art against a third party so, in the words of the prolific inventor Ben Franklin, “an ounce of prevention is worth a pound of cure”. There is no better substitute for inadvertent disclosure of patentable information than filing at least a provisional patent application to protect it before presenting it anywhere.
Found in Translation: You have a great invention and you disclose it at a conference… Now what?
By Gabriella Chan