{"id":2078,"date":"2018-06-11T14:52:38","date_gmt":"2018-06-11T18:52:38","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2078"},"modified":"2018-07-01T21:00:42","modified_gmt":"2018-07-02T01:00:42","slug":"board-failed-to-properly-consider-circumstances-of-disclosure-when-it-determined-they-were-not-printed-publications","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2078","title":{"rendered":"Board Failed to Properly Consider Circumstances of Disclosure When It Determined They Were Not Printed Publications"},"content":{"rendered":"

In Medtronic, Inc. v. Barry,<\/a> [2017-1169, 2017-1170] (June 11, 2018) the Federal Circuit\u00a0affirmed-in-part and vacated-in-part two PTAB Decisions finding that the Board erroneously concluded that asserted videos and slides were\u00a0were not prior art because
\nthe Board did not fully consider all the factors for determining\u00a0whether the video and slides were publicly accessible.<\/p>\n

The patents in suit,\u00a0U.S. Patent Nos. 7,670,358 and 7,776,072 are directed to methods and systems for\u00a0ameliorating\u00a0aberrant spinal column deviation conditions.\u00a0 After being sued for infringement, Medtronic instituted two IPRs relying in part on a video demonstration and a related\u00a0slide presentation to spinal surgeons at various\u00a0industry meetings and conferences in 2003.\u00a0\u00a0The\u00a0Board found that the video and slides, although presented\u00a0at three different meetings in 2003, were not publicly\u00a0accessible and therefore were not \u201cprinted publications,\u201d\u00a0in accordance with 35 U.S.C. \u00a7 102.<\/p>\n

The determination of whether a document is a “printed\u00a0publication\u201d under 35 U.S.C. \u00a7 102(b) \u201cinvolves a case-by-case inquiry into the facts and circumstances surrounding
\nthe reference\u2019s disclosure to members of the\u00a0public. There are many ways in which a reference\u00a0may be disseminated to the interested public, so public\u00a0accessibility is the touchstone in determining\u00a0whether a reference constitutes a \u2018printed publication\u2019
\nbar under 35 U.S.C. \u00a7 102(b).\u00a0 A reference will be considered publicly accessible\u00a0if it was \u2018disseminated or otherwise made available to the\u00a0extent that persons interested and ordinarily skilled in\u00a0the subject matter or art exercising reasonable diligence could\u00a0locate it.<\/p>\n

The Federal Circuit noted that the\u00a0distribution of\u00a0certain materials to groups of people at one or more\u00a0meetings presents a slightly different question than references stored in libraries, and that in the former, the\u00a0publication\u00a0need not be easily searchable after publication if it was\u00a0sufficiently disseminated at the time of its publication.\u00a0 The Federal Circuit identified several relevant factors from the case law, including (1)\u00a0whether the copies were freely distributed to interested\u00a0members of the public; (2)\u00a0any expectations of confidentiality;\u00a0(3) the length of time the display was\u00a0exhibited, (4) the expertise of the target audience (to\u00a0determine how easily those who viewed the material could
\nretain the information), (5) the existence (or lack thereof)\u00a0of reasonable expectations that the material displayed\u00a0would not be copied,\u201d and (6) \u201cthe simplicity or ease with
\nwhich the material displayed could have been copied.\u201d<\/p>\n

The Federal Circuit said the\u00a0record does not show that the Board fully considered
\nall of the relevant factors, including effect of the differences in the various disclosures.\u00a0 The Federal Circuit said that the\u00a0nature of those meetings, as well as any restrictions on
\npublic disclosures, expectations of confidentiality, or,\u00a0alternatively, expectations of sharing the information\u00a0gained, can bear important weight in the overall inquiry.\u00a0\u00a0For these reasons, the Federal Circuit vacated the Board\u2019s finding that\u00a0the video and slides are not printed publications and\u00a0remand for further proceedings.<\/p>\n","protected":false},"excerpt":{"rendered":"

In Medtronic, Inc. v. Barry, [2017-1169, 2017-1170] (June 11, 2018) the Federal Circuit\u00a0affirmed-in-part and vacated-in-part two PTAB Decisions finding that the Board erroneously concluded that asserted videos and slides were\u00a0were not prior art because the Board did not fully consider … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[12,81,1],"tags":[],"class_list":["post-2078","post","type-post","status-publish","format-standard","hentry","category-obviousness","category-printed-publication","category-uncategorized"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2078","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2078"}],"version-history":[{"count":2,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2078\/revisions"}],"predecessor-version":[{"id":2080,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2078\/revisions\/2080"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2078"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2078"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2078"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}