Functional Medical Device Demonstrated at Trade Show Trigged On Sale Bar of pre-AIA 102(b)

In Minerva Surgical, Inc. v. Hologic, Inc., [2021-2246] (February 15, 2023), the Federal Circuit affirmed summary judgment that the asserted claims of U.S. Patent No. 9,186,208 on surgical devices for a procedure called endometrial ablation were anticipated under the public use bar of pre-AIA 35 U.S.C. § 102(b).

The Federal Circuit first pointed out that the patented technology was “in public use” because, before the critical date, Minerva disclosed fifteen devices having the technology at AAAGL 2009, an industry related event dubbed “the Super Bowl of [the] industry” by one of the inventors. Minerva’s disclosure of these devices spanned several days and included Minerva showcasing them at a booth, in meetings with interested parties, and in a technical presentation, and a brochure. Minerva did not disclose the devices under any confidentiality obligations, despite the commercial nature of the event. The Federal Circuit said that an invention is in public use if it is shown to or used by an individual other than the inventor under no limitation, restriction, or obligation of confidentiality.

The Federal Circuit then pointed out that at the time of the public use, the technology
was “ready for patenting.” Specifically, Minerva had created working prototypes and enabling technical documents describing the claimed technology. The Federal Circuit said that “ready for patenting can be shown in at least two ways: (1) a reduction to practice before the critical date; (2) or proof that before the critical date the inventor had prepared drawings or other descriptions of the invention sufficiently specific to enable a person or ordinary skill in the art to practice the invention.

Minerva raised three reasons why the invention was not in public use at the AAGL 2009″ First, Minerva argued that it “merely displayed” the device. The Federal Circuit rejected this, noting that the device was actually demonstrated with a transparent uterine model. The Federal Circuit distinguished Motionless Keyboard relied upon by Minerva, because that case involved a visual view of the device without any disclosure of the claimed technology,and finding that Minerva’s disclosure went “well beyond” the disclosure in Motionless Keyboard. Second, Minerva argued that there was no disclosure of the claimed invention. The Federal Circuit rejected the contention that the public had to actually handle the device, saying that all is required is that the public understood the invention, and the feedback collected from the AAGL 2009 showed that Minerva allowed knowledgeable individuals to scrutinize the invention enough to recognize and understand the technology Minerva later sought to patent. Third, Minerva argued that the invention was not “ready for patenting” because Minerva was still making improvements. The Federal Circuit rejected this for two reasons: (1) Minerva reduced the invention to practice and (2) Minerva had enabling documentation describing the invention.

The Federal Circuit then concluded that district court thus correctly granted summary judgment of invalidity because there are no genuine factual disputes, and defendants are entitled to judgment as a matter of law that the asserted claims are anticipated under
the public use bar of § 102(b).

Lack of Written Opinion Leaves Infringer Exposed in the Crosswalk

In Polara Engineering Inc. v. Campbell Company, [2017-1974, 2017-2033] (July 10, 2018), the Federal Circuit affirmed in part, vacated in part, and remanded the district court’s determination that claims 1-4 of U.S. Patent No. 7,145,476 on accessible pedestrian signal systems were valid and willfully infringed, and awarding enhanced damages.

Cambell argued on appeal that the claims were invalid of prior public uses and over the prior art.  Regarding the public uses, the Federal Circuit noted that an inventor who seeks to perfect his discovery may conduct extensive testing without losing his right to obtain a patent for his invention—even if such testing occurs in the public eye.  A use may be experimental if its purpose is to test claimed features of the invention or to determine whether an invention will work for its intended purpose.  The Federal Circuit found that that substantial evidence supported the jury’s finding of experimental use that negates application of the public use bar, noting that testing to perfect features inherent to the claimed invention, such as durability qualifies as experimental, and that in any event the testing did relate to claimed features.  While there was evidence that the testing involved commercial features, rather than claimed features, the Federal Circuit could not say that the jury’s finding of experimental use lacked substantial evidentiary support.

Regarding invalidity over the prior art, the Federal Circuit agreed that Campbell was estopped from arguing that the district court erred in its claim construction instruction
because the court adopted Campbell’s proposed construction of “digital data signals.”  The Federal Circuit found substantial evidence for the jury’s implied fact finding.

On the issued of enhanced damages, the Federal Circuit noted that enhanced damages are designed as a “punitive” or “vindictive” sanction for egregious
infringement behavior, and found that substantial evidence supports
the jury’s finding of willful infringement.  The Federal Circuit said that the jury reasonably could have found that Campbell intentionally copied the ’476 patent despite a significant known risk that its two-wire AAPS would infringe the ’476 patent, having been advised by counsel that there were “areas of potential conflict.”  While Campbell argued that it relied upon competent opinion of counsel,  the Federal Circuit said that Campbell “has not pointed to any documentary or third-party evidence showing it received an opinion of counsel,” and the jury was entitled not to credit the testimony that there was such an opinion.  While Campbell’s challenge that the jury instruction did not specify the time period during which Campbell’s conduct was willful may have had merit, Campbell waived this challenge by agreeing to a simple yes or no instructions.

Finally, on the amount of enhanced damages (the district court used a multiplier 2 1/2), the Federal Circuit said that the district court awarded almost the maximum amount
of enhanced damages, but did not adequately explain its basis for doing so, and failed to even mention Campbell’s public use defense, which presented a close question in
this case.  The Federal Circuit found that the district court may have erred in its consideration of Campbell’s public use defense, and vacated the award of enhanced damages and remanded.