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Barry v. Medtronic, Inc.

Pre-Critical Date Performance of Surgical Method Held Neither “On Sale” Nor “Public Use”

Barry v. Medtronic, Inc., __ F.3d __, 2019 WL 302886 (Fed. Cir. Jan. 24, 2019) (Prost (dissenting in part), Moore, TARANTO) (E.D. Tex.: Clark) (3 of 5 stars)

Fed Cir affirms liability judgment and $17 million damages award against Medtronic. Dr. Barry’s two patents relate to techniques for correcting scoliosis and other spinal column anomalies.

Public use: The district court did not err in rejecting Medtronic’s argument for JMOL that one patent’s method claims were invalid under § 102(b) for public use. The record contained substantial evidence that Dr. Barry’s invention was not ready for patenting at the time it was used in public, and including testimony that Dr. Barry did not know the invention would work for its intended purpose until later because it takes time post-operation to confirm that an operation was successful. The opinion rejects the dissent’s contention that in view of the patent claims success should be measured immediately upon completion of surgery.

The opinion further holds that the record had substantial evidence that the surgery in question was neither accessible to the public nor an act of commercial exploitation. The number of people in the operating room was small, and the jury could have found them to be operating “under an implied duty of confidentiality covering at least the tools and techniques used.” Op. at 24. And although Dr. Barry was compensated for his participation in the surgery, the surgeries fall within the experimental use exception under the multi-factor test in Polara Engineering, 894 F.3d 1339 (Fed. Cir. 2018). The opinion rejects Medtronic’s argument that Dr. Barry’s non-disclosure to patients that they were receiving experimental treatment should be given heavy weight, and discusses how the overall circumstances here “would [not] lead the public to reasonably believe the invention was in the public domain.” Op. at 29 (citing Manville Sales, 917 F.2d 544 (Fed. Cir. 1990)).

On-sale bar: The district court also did not err in rejecting Medtronic’s on-sale bar defense, largely for the experimental use reasons above. The opinion rejects Medtronic’s contention that the district court abused its discretion by instructing a jury that “experimental use” has different meanings in patent law than in medicine generally.

Prior invention: The district court did not err in rejecting Medtronic’s contention that the claimed subject matter for both patents was previously invented by another. Substantial evidence in the record indicated that Medtronic’s alleged previous inventor did not reduce to practice until after Dr. Barry.

Inequitable conduct: The district court did not err in finding no inequitable conduct. Although during prosecution Dr. Barry had submitted replacement figures that did not match the description in the specification, he had ultimately corrected (via certificate), and then there was no clear error in the district court’s determination that intent to deceive had not been shown.

Direct infringement: Substantial evidence supported the jury’s finding that surgeons directly infringed the patents. The district court did not err in admitting and permitting reliance on a survey that asked doctors whether they had performed surgeries that matched a description (based on the claim language), but did not actually name Medtronic’s accused surgery kit. And there was other evidence of direct infringement in the record.

Inducement: Substantial evidence also supported the jury’s finding that Medtronic induced infringement.

Damages: Because the district court did not abuse its discretion in admitting the survey above, the opinion rejects Medtronic’s damages challenge.

Dissent: Chief Judge Prost would have found the surgical methods to have been both “on sale” and “in public use” before the § 102(b) critical date.

KEYWORDS: ON SALE BAR; PUBLIC USE; EXPERIMENTAL USE; READY FOR PATENTING; INVALIDITY (NO); INFRINGEMENT (YES); INDUCEMENT (YES); DIRECT INFRINGEMENT (YES); SURVEYS