On June 11, 2018, the Federal Circuit decided Medtronic Inc. v. Barry, a ruling that provides practitioners and industry participants with a concise framework to assess whether printed publications might be used as prior art references in subsequent challenges to a patent’s validity. [2018 WL 2769092 (Fed. Cir. 2018) (hereinafter, “Opinion”).] As discussed below, parties should look to this case for two reasons. First, from the perspective of a patent applicant or owner, Medtronic describes the appropriate factors to consider when determining if prior art is publicly accessible as a “printed publication” under 35 U.S.C. § 102(b) (pre-AIA). Second, and more generally, the Federal Circuit’s ruling may prompt the PTAB to apply a more expansive analysis when determining whether references were publicly accessible for the purposes of § 102, and thus prior art.
The Federal Circuit’s opinion part-affirms, part-vacates the PTAB’s IPR determination that Medtronic’s IPR petition had not proved the unpatentability of Barry’s scoliosis treatment inventions claimed in U.S. Patent Nos. 7,670,358 and 7,776,072 after the PTAB concluded that certain videos and slides presented and distributed to spinal surgeons at three medical programs were not publicly accessible, and thus were not prior art. [Opinion at 9.] The Federal Circuit vacated the public-accessibility portion of the PTAB’s analysis. The court asserted that the PTAB failed “to consider all the factors for determining whether the [v]ideo and [s]lides were publicly accessible.” [Opinion at 2 (emphasis added).] The Federal Circuit’s opinion then described the proper factors relevant to deciding a reference’s public accessibility.
Is a Printed Publication Publicly Accessible and Thus Prior Art?
The Federal Circuit’s opinion described several non-exclusive factors used to determine whether asserted prior art is publicly accessible. [Opinion at 16–23.] These factors include (1) whether the materials were freely given to interested members of the public, (2) the size and nature of all meetings where the materials were available, and (3) whether there was a reasonable expectation of confidentiality, even if only by custom. [Opinion at 21–22.] The court emphasized that, for the third factor, an expectation of confidentiality need not be a formal, legal obligation, but could be dictated by norms relevant to the particular group. [Id.] Practitioners and inventors should consider each of these factors when counseling and preparing litigation strategies as well as prior to disclosure of inventions to third parties.
Further, the Federal Circuit discussed three precedential decisions that provide context to the foregoing factors, lending additional guidance to parties wishing to assess the prior art risks of disclosing their inventions at conferences or meetings. [Opinion at 16–23 (citing Massachusetts Institute of Technology v. AB Fortia, 774 F.2d 1104 (Fed. Cir. 1985); Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319 (Fed. Cir. 2009); and In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004).]
In MIT, a paper presented at a scientific conference, constituted prior art under § 102(b). Between 50 and 500 persons were aware of the contents of the presentation and the paper was distributed “without restriction to at least six persons.” [Opinion at 20.] The Medtronic court distilled from this that “whether the copies were freely distributed to interested members of the public [is] a key consideration in our analysis.” [Id. (providing further depth to factor “(1)”)]
In Cordis, research papers “distributed by a doctor to certain colleagues and two commercial entities” did not constitute prior art. The court held that, for the colleagues, “academic norms gave rise to an expectation that disclosures would remain confidential.” [Opinion at 20.] Likewise, for the companies, an “attempt to commercialize the technologies did not make the documents accessible to the public.” [Id.] Critical to the court’s holding was that a legal obligation of confidentiality was not required, a custom of confidentiality was sufficient. [Opinion at 21 (providing further depth to factors “(1)” and “(3)”).]
Finally, in In re Klopfenstein, a “printed slide presentation that was displayed prominently for three days at a conference to a wide variety of participants” constituted prior art. The court there “identified the relevant factors to include: (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.” [Opinion at 21 (internal quotation marks omitted).]
Medtronic is important, as it assembles the most well-defined factors (and accompanying analysis) to date that the PTAB and the courts will consider when analyzing whether an asserted prior art was sufficiently public to count as a “printed publication”. While this analysis “involves a case-by-case inquiry into the facts and circumstances” of each disclosure, the opinion in Medtronic nevertheless provides several non-exclusive factors important to this analysis. [Opinion at 19, quoting In re Klopfenstein, 380 F.3d at 1350.] Additional factors considered in other cases, but not Medtronic, can include the level of public accessibility of archived documents. [Opinion at 19–20; see, e.g., Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358 (Fed. Cir. 2014).] For practitioners and inventors asserting or defending against prior art, a full evaluation of all the factors explained above by the Medtronic court will provide a more thorough, reliable, and effective argument.
Deeper PTAB Analysis Defining a Printed Publication as Prior Art
The Federal Circuit ultimately remanded the case back to the PTAB to revisit whether the asserted prior art was publicly accessible. In particular, the court stated that the PTAB had failed to properly evaluate whether all of the meetings were sufficiently non-public. [Opinion at 22.] The court directed the PTAB to consider whether there was an expectation of confidentiality among those at the meetings who received the materials.
While the court ultimately did not dictate or even imply a particular outcome on remand, the Federal Circuit’s decision in Medtronic might suggest that the PTAB is more likely to expand the circumstances where materials are “publicly accessible” for § 102 purposes. Or, at the very least, the PTAB may pay closer attention to certain factors, like whether a reasonable expectation of confidentiality existed at the time of the disclosure.
Will Orlady is a litigation associate in Fish & Richardson’s Twin Cities office. Mr. Orlady was previously a summer associate with the firm, in which he collaborated to research and brief a matter on appeal to the Federal Circuit. He also analyzed novel issues related to...