by Dennis Crouch

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

In a split decision, the Federal Circuit has sided with the patentee Dr. Barry — affirming the induced infringement and $17 million damages judgments as well as several determinations regarding the public-use and on-sale statutory bars. The patents here are directed to spine surgery methods that involve large screws drilled into the spine. U.S. Patent Nos. 7,670,358 and 8,361,121.

The dissenting opinion by Chief Judge Prost offers a concise explanation of a primary issue in the case:

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) [pre-AIA].

The majority added to these facts — that Dr. Barry was not satisfied that his method worked well enough until follow-up testing that occurred after the third surgery.

Here, the patented invention is a method — and so cannot really be “on sale.” In addition, Barry’s pre-critical-date performance of the method was within the surgical rule where HIPAA and other privacy rules ensure that the method was not publicly used. However, one conflict was the extent that Barry was commercializing the the invention — with the idea that commercialization counts as a public use. In a footnote, the Court concludes that he did not “exploit” his invention prior to the critical date since he charged the same for his new surgery has he did for the old.

Though earning his normal fees from the three surgeries [likely $$$$$], Dr. Barry did not “exploit” his invention as a means to attract the three patients for those surgeries or to charge more because he used his new technique. The jury could find that he would have gotten the same business, and earned the same fee, even if he had not planned to use or used the inventive process.

There are a number of major problems with this conclusion from the court — likely enough to fill a law review article.

In the end, for the majority, the case turned on the question of whether the invention was “ready for patenting” at the time when it was used for the surgeries. The majority found that it was not yet ready for patenting – and thus that the uses did not serve as prior art. Even though the invention had been reduced to practice used in practice, it was not ready for patenting because Dr. Barry didn’t really know if it worked to create a stable improvement in spine function. “[T]here 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.” The dissent again disagrees — arguing accurately that “Dr. Barry could have obtained a patent before the critical date.”

Note here that in my original short explanation of this decision, I indicated that the invention “had been reduced to practice.” According to the majority, the invention was not reduced to practice because that requires a determination (by the inventor) “that the invention would work for its intended purpose.” In re Omeprazole Patent Litig., 536 F.3d 1361 (Fed. Cir. 2008).