Docket No. 2017-1169, -1170 (IPR2015-00780, -00783)
TARANTO, PLAGER, CHEN
June 11, 2018
Brief summary: FC panel concluded that “[t]he record does not show that the Board fully considered all of the relevant factors” in determining whether slides presented at a meeting were publicly accessible. FN1 also explained that the FWDs did not address every ground raised by Medtronic, but that it understands the Board will consider all of those grounds on remand in view of SAS (US 2018).
Summary: Medtronic appealed Board final written decisions (FWDs) that Mr. Barry’s claims of US 7,670,358 and US 7,776,072 relating to methods for spinal alignment would not have been obvious over two references and that others were not publicly accessible prior art. Medtronic submitted “the ‘928 Application” disclosing “a tool (‘the ‘928 device’) for displacing vertebrae…during spinal surgery”), “a book chapter describing techniques of using pedicle screws in the thoracic and lumbar spine” (“MTOS”), and “Video and Slides” presented “to spinal surgeons at various industry meetings and conferences in 2003” (which the Board concluded were not “printed publications” under pre-AIA § 102). The FC panel explained that it reviewed the Boards’ legal conclusions de novo and its factual findings for substantial evidence (Ethicon, FC 2016; In re Applied Materials, FC 2012 (“as a reasonable mind might accept as adequate to support a conclusion”)). As to claims 1-5 of the ‘358 Patent, the FC panel found that substantial evidence (including expert testimony) supported the Board’s conclusion that “Medtronic failed to prove that the challenged claims would have been obvious over the combination of the ‘928 Application and MTOS” (e.g., the ‘928 Application provides “no disclosure…of scoliosis, scoliotic curvature, or twisting of the spine”, Medtronic and its expert failed to cite to any particular passage or figures from MTOS that ‘explicitly disclose the simultaneous application of manipulative force’” (i.e., the “Simultaneously Rotating” limitation of independent claim 1)). The Board’s analysis of the ‘072 patent focused on the “Derotation Tool” limitation, which the FC panel explained is required by all of the ‘072 claims. The FC panel found “no error in the Board’s analysis of the cited references or its decision to credit the testimony of the patent owner’s expert over that of Medtronic’s expert that the references did not disclose a derotation tool.”
Medtronic also unsuccessfully challenged the ‘358 and ‘072 claims would have been obvious over the ‘928 Application, MTOS, and the Video and Slides. As mentioned above, the Board determined the Video and Slides were not prior art (printed publications within the meaning of 35 U.S.C. § 102(b)). “A CD containing the video was distributed at three separate programs in 2003”, the earliest being “limited to SDSG [Spinal Deformity Study Group] members” while two later meetings “were open to other surgeons.” The FC panel explained that under 35 U.S.C. § 102(b) “[a] reference will be considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skill in the subject matter or art exercising reasonable diligence can locate it” (Blue Calypso, FC 2016 (citing Kyocera Wireless, FC 2008); Suffolk Techs., FC 2014 (“need not be easily searchable after publication if it was sufficiently disseminated”); MIT, FC 1985 (oral presentation “to a group of cell culturists interested in the subject matter was considered a ‘printed publication’); Cordis, FC 2009 (research papers distributed by a doctor to certain colleages and two commercial entities not publicly accessible; “the record contained clear evidence that academic norms gave rise to an expectation that dislcosures would remain confidential”); In re Klopfenstein, FC 2004 (four factors to be considered: “the length of time the display was exhibited”; “the expertise of the target audience”; “the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied”, and “the simplicity and ease with which the material could have been copied”)). The FC panel concluded that “[t]he record does not show that the Board fully considered all of the relevant factors” and therefore vacated its finding on this point and remanded it.
FN1 of the FC panel opinion explained that the FWDs did not address every ground raised by Medtronic, but that it understands from the PTO’s April 2018 “Guidance on the impact of SAS (US 2018) on AIA trial proceedings” that the Board will consider all of those grounds on remand.