Minvera Surgical, Inc. v. Hologic, Inc., Cytyc Surgical Products, LLC
Docket No. 2021-2246 (https://cafc.uscourts.gov/opinions-orders/21-2246.OPINION.2-15-2023_2081255.pdf)
PROST, REYNA, STOLL
February 15, 2023
Brief Summary: DC finding of Minverva’s claims invalid for public use at a scientific meeting affirmed.
Summary: Minerva appealed DC grant of summary judgment of invalidity to Hologic, finding the asserted claims of US 9,186,208 directed to endometrial ablation devices to be invalid under the public use bar of pre-AIA 35 U.S.C. section 102(b). The DC found that the claimed subject matter was “ready for patenting” and non-confidentially disclosed at a technology meeting that “spanned several days and included Minerva showcasing them at a booth, in meetings with interested parties, and in a technical presentation”. The application leading to the ‘208 patent was filed on Nov. 12, 2012, and claims priority to Nov. 7, 2011, and listed Csaba Truckai and Akos Toth as the inventors. The DC construed the claim term “the inner and outer elements have substantially dissimilar material properties,’ (‘SDMP’ term)…to mean that the ‘inner and outer frame elements have different thickness and different composition.’” Hologic asserted that Minerva’s “Aurora” device that was shown at a 2009 scientific meeting “disclosed every limitation of the asserted claims”. The FC panel opinion explains that 2009 reports prepared by Minerva showed its Aurora device performed successfully in alignment “with the benefits that the SDMP technology is intended to achieve”, “‘would be considered acceptable for clinical use in pre-hysterectomy cases’—i.e., in live patients”, and included the claimed “inner” and “outer” elements). In October 2009, Minerva “pitched the Aurora device to a potential acquiror.” Minerva then presented the device at the November 2009 scientific meeting including a presentation on Nov. 19, 2009, and then released an “Investigator’s Brochure” on Nov. 20, 2009 that provided “a detailed description of the Aurora device”. A “Bill of Materials” was also in evidence, with “Inventor Toth [testifying] that the device referenced in the Bill of Materials was ‘[l]ikely’ the Aurora device shown at” the meeting. The FC panel explained that “[t]he public use bar is triggered ‘where, before the critical date [here, Nov. 7, 2010, one year before the earliest priority date], the invention is [(1)] in public use and [(2)] ready for patenting’”, “[t]he “in public use” element” being “met if the invention ‘was accessible to the public or was commercially exploited’” with “no limitation, restriction, or obligation of confidentiality” (Polara Eng’g, FC 2018; Invitrogen, FC 2005; Delano Farms, FC 2015; Dey, FC 2013; Am. Seating, FC 2008). The FC panel also explained that “ready for patenting” element can be shown “by proof of reduction to practice before the critical date” (“had possession of the subject matter of the [claim] and . . . it was shown or known to work for its intended purpose” (Pfaff, US 1998; Helsinn, FC 2017; Hamilton Beach, FC 2013 (“working prototype”); Manning, FC 2002) or by “sufficiently specific” “drawings or other descriptions… sufficiently specific to enable a person skilled in the art to practice the invention” (Pfaff, Hamilton Beach (“CAD drawings”)). Minerva argued it “‘merely displayed’ the device” (Motionless Keyboard, FC 2007), it “lacked the SDMP term”, and it “was still improving” the device (i.e., “not ‘ready for patenting’”). The FC panel disagreed as “sophisticated industry members…were allowed to scrutinize the Aurora device closely and see how it operated” non-confidentially (Bernhardt, FC 2004; “at least one member of the public without any secrecy obligations understood the invention” (Netscape, FC 2002)), “disclosed the SDMP term”, and was reduced to practice (e.g., “working prototypes that embodied claim 13 and worked for the intended purpose”; “later refinements” or “fine tuning” do not overcome this issue (Atlanta, FC 2008)). The DC decision was therefore affirmed.