Barry v. Medtronic, Inc. (Fed. Cir. 2019)

By Kevin E. Noonan --

Elevation to Chief Judge in a U.S. Court of Appeals, particularly in the Federal Circuit, is frequently accompanied by an apparent mandate to place an imprimatur on the Court's decisions.  This pattern has been shown consistently in this appellate court, from Chief Judge Markey through Chief Judges Michel and Rader.  Now it is Chief Judge Prost's turn, as illustrated by her decision in Amgen v. Sanofi, overturning application of the written description precedent of Noelle v. Ledermann as being inconsistent with the Court's en banc opinion in Ariad v. Eli Lilly & Co. This week she did not prevail in convincing her brethren of the correctness of her opinion and thus provided a dissent, in Barry v. Medtronic, Inc., relating to the application of the public use and on-sale bars to patentability and its relationship to the experimental use exception to applying these bars.

The case arose in patent infringement litigation by Dr. Mark Barry, a sole inventor, for infringement by Medtronic of his invention as claimed in U.S. Patent Nos. 7,760,358 and 8,361,121.  The invention was directed to a device and method for correcting spinal column deviation conditions; claims 4 and 5 of the '358 patent asserted in the litigation depend from independent claim 1:

1.  A method for aligning vertebrae in the amelioration of aberrant spinal column deviation conditions comprising the steps of:
    selecting a first set of pedicle screws, said pedicle screws each having a threaded shank segment and a head segment;
    selecting a first pedicle screw cluster derotation tool, said first pedicle screw cluster derotation tool having first handle means and a first group of pedicle screw engagement members which are mechanically linked with said first handle means, each pedicle screw engagement member being configured for engaging with, and transmitting manipulative forces applied to said first handle means to said head segment of each pedicle screw of said first set of pedicle screws,
    implanting each pedicle screw in a pedicle region of each of a first group of multiple vertebrae of a spinal column which exhibits an aberrant spinal column deviation condition;
    engaging each pedicle screw engagement member respectively with said head segment of each pedicle screw of said first set of pedicle screws; and
    applying manipulative force to said first handle means in a manner for simultaneously engaging said first group of pedicle screw engagement members and first set of pedicle screws and thereby in a single motion simultaneously rotating said vertebrae of said first group of multiple vertebrae in which said pedicle screws are implanted to achieve an amelioration of an aberrant spinal column deviation condition;
    selecting a first length of a spinal rod member; wherein one or more of said pedicle screws of said first set of pedicle screws each includes:
        a spinal rod conduit formed substantially transverse of the length of said pedicle screw and sized and shaped for receiving passage of said spinal rod member therethrough; and
        spinal rod engagement means for securing said pedicle screw and said spinal rod member, when extending through said spinal rod conduit, in a substantially fixed relative position and orientation;
    extending said first length of said spinal rod member through said spinal rod conduits of one or more of said pedicle screws of said first set of pedicle screws; and
    after applying said manipulative force to said first handle means, actuating said spinal rod engagement means to secure said vertebrae in their respective and relative positions and orientations as achieved through application of said manipulative force thereto.

Further limitations add a step "requiring a second set of pedicle screws and a second derotation tool with a second group of engagement members and a second 'handle means'" (claim 2); and steps requiring a second handle rod (claim 3): steps for applying a "manipulative force" to the first and second handle means, carried out substantially simultaneously to cooperatively achieve an amelioration of an aberrant spinal column deviation condition" in claim 4, dependent on claim 3); and claim 5 dependent on claim 2.  Claims 2-4 of the '121 patent are directed to "systems":

2.  A system for aligning vertebrae in the amelioration of aberrant spinal column deviation conditions comprising:
    a first set of pedicle screws, each pedicle screw having a threaded shank segment and a head segment; and
    a first pedicle screw cluster derotation tool, said first pedicle screw cluster derotation tool having a first handle means for facilitating simultaneous application of manipulative forces to said first set of pedicle screws and a first group of three or more pedicle screw engagement members which are mechanically linked with said first handle means, said first handle means having a handle linked to each pedicle screw engagement member of the first group of three or more pedicle screw engagement members and a linking member to join together the handles linked to the pedicle screw engagement members, wherein the handle means is configured to move simultaneously each pedicle screw engagement member; wherein each pedicle screw engagement member is configured to en- gage respectively with said head segment of each pedicle screw of said first set of pedicle screws; and wherein each pedicle screw engagement member is configured to transmit manipulative forces applied to said first handle means to said head segment of each pedicle screw of said first set of pedicle screws;
    a second set of pedicle screws, each pedicle screw having a threaded shank segment and a head segment;
    a second pedicle screw cluster derotation tool, said second pedicle screw cluster derotation tool having a second handle means for facilitating simultaneous application of manipulative forces to said second set of pedicle screws and a second group of three or more pedicle screw engagement members which are mechanically linked with said second handle means, said second handle means having a handle linked to each pedicle screw engagement member of the second group of three or more pedicle screw engagement members and a handle linking member to join together the handles linked to the pedicle screw engagement members, wherein the handle means is configured to move simultaneously each pedicle screw engagement member; wherein each pedicle screw engagement member is configured to engage respectively with said head segment of each pedicle screw of said second set of pedicle screws; and wherein each pedicle screw engagement member is configured to transmit manipulative forces applied to said second handle means to said head segment of each pedicle screw of said second set of pedicle screws;
    a cross-linking member that links the first handle means to the second handle means . . . .

The cross-linking member element in the '121 patent was distinguished as an advance to the claims of the '358 patent.

The history of the invention and how it was disclosed and ultimately protected by patent forms the predicate facts for the dispute on appeal.  Named inventor Barry, an orthopedic surgeon, began development of his invention while working with a sales representative for DePuy, a medical device company.  During this time he also discussed his ideas with a representative from another medical device company, SpineVision.  After developing the tool, Dr. Barry used it in three back surgeries performed over a three-month period on patients having "the three most common types of scoliosis-caused spinal deviation conditions that surgeons typically see."  After a three-month post-operative convalescence for the last of these patients, Dr. Barry prepared an abstract for presentation at a scientific meeting and within one year filed a patent application that eventually matured into the patents-in-suit.  These activities were thus within the one-year grace period applied under 35 U.S.C. § 102(b) prior to amendment of the Patent Act under the Leahy-Smith America Invents Act.

Following introduction of an infringing product by Medtronic, Barry sued and a jury found in his favor and awarded $15,095,970 for infringement of the '358 patent and $2,625,210 for infringement of the '121 patent; each of these amounts was increased by 20% by the trial court.  The jury rejected Medtronic's defenses of public use, on-sale, and prior invention.  This appeal followed, involving Medtronic's defenses of invalidity under § 102(b) and § 102(g), inequitable conduct, induced infringement, and damages.

The Federal Circuit affirmed, in a decision by Judge Taranto joined by Judge Moore; Chief Judge Prost provided a strong dissent (in part) regarding the public use and on-sale bar defenses.  On the public use defense, the majority first recited the standard, that the invention must have been in public use and "ready for patenting" more than one year before a patent's filing date.  The Court majority found that the invention was not "ready for patenting" based on Dr. Barry's testimony that he did not know that the claimed method and system had worked for their intended purpose until after the results of the third patient surgery could be evaluated three months after the surgery.  The panel majority also found that Dr. Barry's use, while not burdened by explicit confidentiality agreements with the patient or surgical staff and (on facts persuasive to Chief Judge Prost in dissent) fully paid for by the patient at Dr. Barry's "customary rates," was negated by the character of the use as experimental use, which "serve[d] as a negation of the statutory bars," citing Polara Eng'g Inc v. Campbell Co., 894 F.3d 1339, 1348 (Fed. Cir. 2018).  The majority affirmed in part based on the standard of review, wherein Judges Taranto and Moore found substantial evidence for the jury's finding that the claimed invention was not "ready for patenting" prior to the critical date.  Specifically, "there is substantial evidence that Dr. Barry's invention was not ready for patenting until January 2004 because the final follow-up from the October surgery was reasonably needed for the determination that the invention worked for its intended purpose," according to the panel majority.

The majority held that Medtronic had not satisfied its burden of showing that the claimed invention had been reduced to practice, i.e., that he had "(1) constructed an embodiment or performed a process that met all the limitations and (2) determined that the invention would work for its intended purpose," citing In re Omeprazole Patent Litig., 536 F.3d 1361, 1373 (Fed. Cir. 2008).  Prong two of this test made evidence of satisfaction of prong one insufficient (including, inter alia, evidence of prior drawings of the invention disclosed by Dr. Barry to third parties).  Here, the panel majority held that the jury was reasonable in concluding that the invention had not been shown to "work for its intended purpose" until after completion and followup of surgeries on three patients "who fairly reflected the real-world range of application of the inventive method" (based on evidence and testimony from both plaintiff and defendant's witnesses).  And the panel further rejected any requirements in the claims for reciting the "intended purpose," based on conventional claim drafting standards ("one typical way of claiming is simply to define the physical steps of the process, or the physical elements of a product, without building functional or purpose language into the claim limitations at all," citing In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997)), as well as Supreme Court (Corona Cord Tire Co. v. Dovan Chemical Corp., 276 U.S. 358, 383 (1928)) and the Federal Circuit's own precedent (TP Laboratories, Inc. v. Professional Positioners, Inc., 724 F.2d 965 (Fed. Cir. 1984); Manville Sales Corp. v. Paramount Sys., Inc., 917 F.2d 544, 549 (Fed. Cir. 1990); Honeywell Int'l Inc. v. Universal Avionics Systems Corp., 488 F.3d 982 (Fed. Cir. 2007); Polara Eng'g Inc v. Campbell Co., 894 F.3d 1339, 1348 (Fed. Cir. 2018)).

The panel majority also held that Medtronic had not established that the invention was in public use prior to the critical date, and in any event its use fell within the experimental use exception.  This conclusion was based on the following facts:  Dr. Barry was the only person to perform the surgeries, and thus had not "relinquished control of his invention" (Egbert v. Lippmann, 104 U.S. 333, 335 (1881)); the evidence showed that the people present in the operating theater did not have a clear view of the operation; and that these people were all bound by at least an implied duty of confidentiality.  Regarding commercial exploitation, while the panel majority acknowledged Dr. Barry's compensation, it rejected the conclusion that this amounted to commercial exploitation sufficient to amount to public use.  This conclusion was based on Dr. Barry's activities satisfying the standards for experimental use as set forth, inter alia, in Clock Spring, L.P. v. Wrapmaster, Inc., 560 F.3d 1317, 1327 (Fed. Cir. 2009):

(1) the necessity for public testing, (2) the amount of control over the experiment retained by the inventor, (3) the nature of the invention, (4) the length of the test period, (5) whether payment was made, (6) whether there was a secrecy obligation, (7) whether records of the experiment were kept, (8) who conducted the experiment, (9) the degree of commercial exploitation during testing, (10) whether the invention reasonably requires evaluation under actual conditions of use, (11) whether testing was systematically performed, (12) whether the inventor continually monitored the invention during testing, and (13) the nature of contacts made with potential customers.

Finally, the panel majority distinguished two earlier cases where experimental use was not found (Sinskey v. Pharmacia Ophthalmics, Inc., 982 F.2d 494 (Fed. Cir. 1992), and LaBounty Mfg., Inc. v. U.S. Int'l Trade Comm'n, 958 F.2d 1066, 1072 (Fed. Cir. 1992)) on their facts (including non-relinquishment of the invention and that other members of the surgical team were aware that the use was experimental).

Turning to the on-sale bar, the panel majority held that their finding that Dr. Barry's use was an experimental use negated the on-sale bar as it had the public use bar, and applied its reasoning for the public use question to decide that the invention was not "ready for patenting" and thus did not satisfy the second prong of the test enunciated by the Supreme Court in Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67 (1998).  The panel majority upheld the jury's determination that the '358 and '121 patents were not invalid under § 102(b) on this basis (as well as rejecting Medtronic's' objection to jury instructions regarding what constituted "experimental use").

Finally, the panel majority affirmed the jury's determination that the asserted claims were not invalid under § 102(g) because Medtronic failed to establish earlier invention by another, and affirmed the District Court's decision that Dr. Barry had not engaged in inequitable conduct (based on an erroneous description of a Figure in the common patent specifications) because there was no evidence of an intent to deceive.  And the majority found "substantial evidence" that Medtronic induced infringement of the surgeons using its infringing systems and methods.

Chief Judge Prost's dissent was predicated on her view that the panel majority had misapplied the law regarding both the public use and on-sale bars under pre-AIA § 102(b); her disagreement was limited to the panel majority's decision regarding the '358 patent.  For Chief Judge Prost "the facts are simple":

More than one year before filing for the '358 patent, Dr. Barry successfully performed his claimed surgical method on three different patients, charging each his normal fee.  Dr. Barry's method was thus prima facie "on sale" or in "public use" before the critical date under 35 U.S.C. § 102(b).

And the crux of her argument is that Dr. Barry's self-serving testimony (that he did not appreciate that his claimed method worked as intended until three months after the last of the three surgeries) was inconsistent with his appreciation, as a surgeon, that "his method worked as of a surgery's completion."  She focuses her argument (as she understands is the dispositive issue) on the "ready for patenting" prong.  (In a footnote she also states that she "see[s] no material difference between the two bars in this case or in the way that evidence of experimental use would affect their application.)  For Chief Judge Prost, Dr. Barry's practice of the three surgeries for his usual fee establishes that the invention claimed in the '358 patent was on sale prior to the critical date, and that only evidence of experimental use can negate this conclusion.  She is convinced that the invention was reduced to practice by at least the completion date of the second surgery, which was also prior to the critical date.  Thus, Chief Judge Prost's view of the evidence is that Medtronic established invalidity as a matter of law under the on-sale bar.

The basis for her disagreement with her brethren ultimately rests on her belief that the claimed method was reduced to practice as soon as Dr. Barry achieved correction of the spinal abnormalities on the surgical table and her rejection of the evidence that he could only appreciate reduction to practice after sufficient patient convalescence had occurred for him to conclude that the surgical adjustment had sufficient permanence to satisfy the criterion of "ameliorating" the abnormality as recited in the asserted claims.

Part of the Chief Judge's disagreement also rests on her determination that Dr. Barry's invention was "ready for patenting" after the second surgery, because he had shown that the spinal deformity could be surgically corrected in two patients (and thus established that the method was of general utility).  She writes:

There was at least some amelioration of those conditions by the end of the surgeries.  At this point, Dr. Barry could have satisfied the enablement and written-description requirements of § 112 and credibly claimed utility under § 101.

She cites Alcon Research Ltd. v. Barr Labs., Inc., 745 F.3d 1180, 1189–90 (Fed. Cir. 2014), for the principles that "a patent does not need to guarantee that the invention works for a claim to be enabled" and that "[t]here is no requirement that the disclosure contain either examples or an actual reduction to practice."  Chief Judge Prost finds error in the majority's conclusions because it focused on reduction to practice rather than whether the invention was ready for patenting, a broader palate that she believes was satisfied on the facts below.  She identifies the error on the majority's conception of what the "intended purpose" of this invention was and finds prior case law "regrettably, confusing" and that "threatens to render superfluous a substantial body of law starting with the Supreme Court's seminal City of Elizabeth case."  As explicated in her dissent, Chief Judge Prost contends that the intended purpose was the narrow one of repositioning the spine to correct a deformity (rather than achieving a result that "cured" the patient of the symptoms of having the deformity).  She finds no support for this outcome (cure) in the specification or claims (although it is reasonable to presume that an inventive method that did not achieve this outcome would fail to satisfy at least the utility requirements of § 101).  While she acknowledges that the majority identify a "common-sense approach to identifying the intended purpose [that] is rooted in the preamble claim language as well as the specification," she asserts that she is "unpersuaded" because concepts like follow-up time are not found in the claims or specification of the '358 patent.

The question of whether an invention is reduced to practice would appear to be one fraught with an understanding of how that phrase would be interpreted by one having ordinary skill in the art.  And while the ultimate question of reduction to practice is a legal one, it is based on such significant underlying factual determinations that the substantial evidence standard would in most cases make it difficult for a court (on post-trial motions) or reviewing court on appeal to overturn a jury's fact findings.  But this is the root of what Chief Judge Prost seems to be arguing in setting out her position.  Her doctrinal analysis is focused on these differences between being "ready for patenting" and "reduced to practice."

For the experimental use exception she recites ancient decisions, notably Smith & Griggs Manufacturing Co. v. Sprague, 123 U.S. 249, 264 (1887), for the principle that the patentee, once either bar has been established, has the burden of establishing experimental use by clear and convincing evidence.  Having found on the facts below that Medtronic established both prongs of the on-sale bar had been satisfied, it is unsurprising that she also considers inadequate Dr. Barry's evidence supporting experimental use.  More importantly, Chief Judge Prost identifies copious Federal Circuit precedent she believes improperly fails to recognize the heightened burden her understanding of precedent imposes on a patentee wanting to establish the experimental use exception.  And the evidence adduced and credited by the District Court and panel majority in her view lacks objectivity, being limited to the inventor's "after-the-fact, litigation-inspired testimony."  At least some of her criticism of this testimony and evidence has a "damned if you do damned if you don't" flavor:

I cannot see how charging one's normal fee makes the sale look like anything other than a normal sale.  Had Dr. Barry charged a premium, a claim of experimental purpose would be difficult to maintain.  Had he charged less, it might suggest experimental purpose—or it might not [citations omitted].

The case has the usual amount of sniping, in footnotes, between the majority and the dissent.  One such statement, however, encapsulates the basic grounds for disagreement between the two opinions (or at least the reasoning underlying them):

The dissent proposes several changes to the legal standards stated in governing case law, such as a change to impose a (high) burden of persuasion on the patent owner to establish experimental use.  Medtronic has not argued for such changes.  We follow existing case law.

Unrecorded but not out of the question would be a simple repost from the Chief Judge:  "For now."  Having already revised how the written description requirement is applied to antibodies in Amgen v. Sanofi, the only question seems to be whether Chief Judge Prost will have a case that gives her an opportunity to revise the on-sale and public use bars in accordance with the principles and reasoning set out in her dissent.

Barry v. Medtronic, Inc. (Fed. Cir. 2019)
Panel:  Chief Judge Prost and Circuit JudgesMoore and Taranto
Opinion by Circuit Judge Taranto; dissenting in part opinion by Chief Judge Prost

Comments

[EG]

Hey Kevin,

With all due respect, Prost is an extremely weak and SCOTUS compliant Chief Judge. She rarely "pushes back" against the nonsensical and ambiguous decisions issued by SCOTUS, especially in the patent-eligibility area. I frankly wish we still Rader as Chief Judge.

[Skeptical]

Imprateur need not be proper...?

To the comment of "the only question seems to be whether Chief Judge Prost will have a case that gives HER..." one may point out that to change this panel's decision as a matter of law requires an en banc panel, to which the Chief Judge - alone - may fare no better.

That is, unless the CAFC acts as it has acted under the "direction and guidance" of the current Chief Judge in having panels one after another simply disregard what any earlier panel may have done (vis a vis the ping pong eligibility decisions).

[Bob Hodges]

Judges Prost's view of the law would require inventors of inventions that they do not yet know are suitable for their intended purpose to file a potentially early and/or ineffective patent application for fear that the experimentation needed to complete the invention would bar a later filed application. The "ready for patenting" standard also bears some blame for this.

[Skeptical]

Bob Hodges,

If an inventor does not yet know if the invention is suitable for its intended purpose, that inventor -- by definition -- does not yet HAVE an invention.

You MUST possess the invention at the critical date of the filing date.

If you need to complete "X" after your filing date, and "X" is necessary for you to HAVE an invention, then you FAIL to actually have an invention at that critical date. You do NOT deserve a patent in that circumstance.

Or course, there were necessary implications to this that were understood and still committed to by Congress when it changed the game with the America Invents Act.

Nonetheless, the understanding of what entails an invention existed even before that change to the AIA! (as detailed in the intricacies of 35 USC 102(g))

At least before, if by the time you filed (possessed) you had not lapsed in your diligence, you had the possibility of "swearing behind" -- as long as your delay in filing was not an unreasonable delay (in a "proof of conception" timing battle; which battle may even include periods of time of abandonment).

Even then though - you STILL needed both conception and reduction to practice in order to HAVE an invention.

Yes, filing an application is considered a constructive reduction to practice. But the bottom line is that you CANNOT avail yourself of that constructive reduction to practice and at the same time admit that you do not have a reduction to practice (as would be the case if you attempt to say -- as you do here -- that you "do not know" or "that you need to complete some experimentation."

This is fundamental bedrock meaning of the very word "invention."

You appear to want to blame someone for something that CANNOT bear the blame as you would have it.

[Skeptical]

..and yes, this is one major reason why the Big Pharma pre-passing FDA hurdles filing of applications constitutes one major scam** on the US public.

Quite simply, filing prior to that critical knowing that you have an actual invention means that you have filed too early and that you necessarily fail to have had possession at the filing date.

No other art unit gets such a pass!

Leastwise, one that is KNOWN to be such a pass, given the number of items that routinely fail to successfully pass the FDA gauntlet.

** and yes, I do realize that I am "firing on the flag" with this view being expressed on a predominantly "medical" oriented patent law blog, but the plain fact of the matter is that if Congress wanted to allow early filing for human health reasons, they could change the legal understanding of the term "invention" to be art-unit specific or otherwise provide for filings BEFORE "invention" is actually obtained.

[Skeptical]

EG,

While Rader was no doubt much stronger, he too failed - and failed miserably to push back against the Supreme Court when that Court stepped beyond its legitimate authority (and pursued its own policy-re-writings [or scrivinings] of the statutory law that is patent law.

There is but one jurist that comes quickly to mind that had the knowledge, courage, and strength to push back. The same one that HELPED WRITE THE ACT OF 1952: Judge Rich.

[Greg DeLassus]

Does anyone here know (actually *know*, as in “can cite a source establishing”) what powers the Chief Judge has relative to the other Circuit Judges? For example, the Chief Justice of the SCOTUS gets to decide who writes the majority opinion when the Chief is in the majority. Does CJ Prost get to assign opinions, or is that left to each panel?

[Kevin E Noonan]

Purely administrative, except that the CJ presided over the en banc court. Of course, it’s possible that “administrative” duties come with power to influence panel composition, etc.

[Skeptical]

Mr. DeLassus,

it's a bit dated, but near as I can find with a quick search:

https://www.fjc.gov/content/administering-federal-judicial-circuits-survey-chief-judges-approaches-and-procedures-0

[Atari Man]

"Having already revised how the written description requirement is applied to antibodies in Amgen v. Sanofi, the only question seems to be whether Chief Judge Prost will have a case that gives her an opportunity to revise the on-sale and public use bars in accordance with the principles and reasoning set out in her dissent."

Kevin, you left out "...and ignore the court's own precedents". I side with EG: things were better under Judge Rader.

Since Federal judges have lifetime appointments, it's impossible to know when Prost will retire, but even if it's tomorrow it won't be soon enough.