MEDTRONIC, INC. v. BARRY

MEDTRONIC, INC. v. BARRY,  Appeal Nos. 2017-1169 & 2017-1170 (Fed. Cir. June 11, 2018).  Before Taranto, Plager, and Chen.  Appealed from Patent Trial and Appeal Board. (Prior Art; Printed Publications)

Background:

Medtronic successfully sought inter partes review of all claims of two of Barry’s patents, which were alleged to have been obvious over various combinations of the ‘928 patent, a book chapter, and a certain video and associated slides.   The claims of Barry’s patents relate to aligning vertebrae, including simultaneously rotating multiple vertebrae with a single motion using a derotation tool.  The ‘928 patent discloses a tool for moving vertebrae closer or further apart from each other during spinal surgery. The book chapter describes a spinal derotation procedure including multiple separate derotation maneuvers to derotate the spine. The video and slides relating to derotation surgery were presented to spinal surgeons at several industry meetings.  The PTAB concluded that the ‘928 patent and the book chapter did not disclose the simultaneous rotation features recited by the claims, and that the video and slides were not prior art because they were not a publication available to the public.  The PTAB held that Medtronic failed to prove that the challenged patent claims were unpatentable.

Issues/Holdings:

  1. Did the PTAB err in finding Medtronic failed to prove that the claims of the Barry’s patents were unpatentable over the ‘928 patent and the book chapter?
  2. Did the PTAB err in concluding that the video and slides were not prior art printed publications? (continue reading)

Summary by:  Donald Raymond

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