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).