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Medtronic, Inc. v. Barry

Conference Presentation to Limited Group of Experts May be § 102(b) “Printed Publication”

Medtronic, Inc. v. Barry, __ F.3d __, (Fed. Cir. June 11, 2018) (Taranto, Plager, CHEN) (PTAB) (2 of 5 stars)

Fed Cir part-affirms, part-vacates IPR decision that claims of two of Dr. Brown’s patents were not proved unpatentable. Citing the Board’s recent Guidance concerning SAS, the opinion “understands” that the Board’s remand proceedings will include consideration of grounds raised in Medtronic’s petition not addressed in the appealed-from decision. Op. at 2 n.1. As to both patents, substantial evidence supported the Board’s rejection of various two-reference combinations by Medtronic. The opinion describes the references and finds no reversible error. The Board erred, however, in concluding that a video demonstration, and a related slide presentation, submitted by Medtronic were not prior art. Citing MIT, 774 F.2d 1104 (Fed. Cir. 1985); Cordis Corp., 561 F.3d 1319 (Fed. Cir. 2009); and Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004), the opinion concludes that the Board failed to consider all relevant factors in evaluating whether the video and slides were printed publications accessible to the public as per § 102(b). The opinion notes that the Board failed to address two of the meetings at which the video and slides were presented (and disseminated on CD and in binders), and did not address whether the people who received the presentation were obliged to keep the material confidential. That the material was distributed to a limited group of experts “does not, without further basis, render these materials publicly accessible or inaccessible, simply by virtue of the relative expertise of the recipients.” Op. at 23.

KEYWORDS: INTER PARTES REVIEW; OBVIOUSNESS (YES); PRIOR ART STATUS; PRINTED PUBLICATION