Medtronic, Inc. v. Mark A. Barry, Appeal Nos. 2017-1169, -1170 (Fed. Cir. June 11, 2018)

The Court affirmed-in-part and vacated-in-part a PTAB decision finding that petitioner Medtronic, Inc. had failed to prove that challenged claims were unpatentable.  The Federal Circuit affirmed the Board’s determination that challenged claims were not obvious over two prior art references, but vacated and remanded the Board’s determination that another reference was not “publicly accessible” under 35 U.S.C. § 102(b) and therefore not prior art.  The Court noted in a footnote that pursuant to the Supreme Court’s decision in SAS Institute, it expected that on remand, PTAB would also consider grounds previously raised in Medtronic’s petition, but on which it had not instituted trial.

The challenged method and apparatus claims were directed to a system for ameliorating certain spinal column conditions involving rotated vertebrae.  The system comprised sets of pedicle screw wrenches and handles deployed across multiple vertebrae in order to distribute corrective derotational forces, and thereby reduce the risk of fracture during corrective surgery.  The particular limitations at issue concerned (in the method claims) a requirement that vertebrae be “simultaneously rotat[ed],” and (in the apparatus claims) a “derotational tool” capable of simultaneously engaging a group of linked pedicle screws.  Appellant petitioner Medtronic argued that the asserted claims were obvious over a patent application claiming a tool for compressing or distracting vertebrae relative to each other (i.e., moving them closer or farther apart), in light of a book chapter describing methods of using pedicle screws to apply derotational forces to individual vertebrae.  Petitioner also introduced a video and related slides, depicting the use of pedicle screws in derotation surgery.

The Federal Circuit affirmed PTAB’s non-obviousness decision, with respect to the first two references, as supported by substantial evidence.  The Court agreed with PTAB that the prior art patent application required multiple motions, as opposed to a single motion, which resulted in compression or distraction of the vertebrae, instead of rotation.  The Court further found no error in PTAB’s crediting patent owner’s expert’s testimony over petitioner’s expert’s that the application did not contemplate any use of the tool that would result in a rotational force being applied.  The Court also agreed with PTAB that the prior art book chapter contained no disclosure of simultaneously manipulating multiple pedicle screws; that the two references were not readily combinable, as they related to very different surgeries; and that neither reference disclosed the “handle means” required to perform the simultaneous rotation functions recited by the challenged claims.  With respect to the apparatus claims, the Court also rejected appellant’s arguments that those claims did not require rotation, in part considering that they were directed to a “derotation tool.”

However, the Court vacated and remanded PTAB’s determination that the video and slides were not publicly accessible prior art.  The video had been distributed on CD to participants at three industry meetings in 2003, and the slides were distributed at two of the same meetings.  Attendance at one meeting was limited to an exclusive group of experts voted into membership by an executive board, and a total of 75 surgeons attended the other two meetings combined.

Neither party contended that the video and slides were indexed and searchable following dissemination, and the Court therefore found the relevant question to be whether they were “sufficiently disseminated” at the time of distribution to render them “publicly accessible.”  Reviewing relevant precedent, the Court identified factors to be considered in assessing sufficient dissemination of materials that are distributed at meetings or conferences.  Specifically, the Court identified as “important considerations” “the size and nature of the meetings and whether they are open to people interested in the subject matter of the material disclosed,” and that “[a]nother factor is whether there is an expectation of confidentiality between the distributor and the recipients of the materials.”  Because PTAB did not review all of the relevant factors—including the potentially critical distinction between the one “closed” meeting and the two “open” gatherings—the Federal Circuit vacated and remanded for further proceedings.

Opinion can be found here.

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Stone Basket Innovations, LLC v. Cook Medical LLC, Appeal No. 2017-2330 (Fed. Cir. June 11, 2018)

In an appeal from a district court denial of a motion for attorney fees pursuant to 35 U.S.C. § 285, the Federal Circuit affirmed. Applying Octane Fitness, the district court denied attorney fees on the basis that the defendant’s evidence was insufficient to warrant a finding of exceptionality. The Federal Circuit considered (1) Cook’s application of a general statement of obviousness testimony to 32 prior art references, (2) the inventor’s testimony that “there is nothing novel about” one of the claim limitations, and 3) Cook’s conduct in the present litigation and in other litigation, concluding that the district court did not err, considering the totality of the circumstances, in finding that the case was not exceptional. 

Opinion can be found here.

Xitronix Corporation v. Kla-Tencor Corporation, Appeal No. 2016-2746 (Fed. Cir. June 15, 2018)

In a precedential order denying rehearing en banc, Judge Newman dissented to address the Federal Circuit’s holding that it lacks jurisdiction in appeals regarding Walker Process antitrust claims. Applying the Supreme Court decision in Gunn v. Minton, 568 U.S. 251 (2013), the three-judge panel held that appealed issues of fraud and inequitable conduct do not present substantial issues of patent law. Judge Newman disagreed, stating that the panel’s holdings were contrary to the Federal Circuit jurisdictional statute 28 U.S.C. § 1295(a)(1), Supreme Court precedent, and Federal Circuit precedent.

To read our original write-up of the panel decision, see here.

Opinion can be found here.