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Medtronic, Inc. v. Barry

United States Court of Appeals, Federal Circuit

June 11, 2018

MEDTRONIC, INC., Appellant
v.
MARK A. BARRY, Appellee

          Appeals from the United States Patent and Trademark Office, Patent Trial and Appeal Board in Nos. IPR2015-00780, IPR2015-00783.

          Mark Christopher Fleming, Wilmer Cutler Pickering Hale and Dorr LLP, Boston, MA, argued for appellant. Also represented by Eric Fletcher; Brittany Blueitt Amadi, Washington, DC; Ryan North Miller, Fox Rothschild, LLP, Philadelphia, PA; Jeff E. Schwartz, Washington, DC.

          John C. Alemanni, Kilpatrick Townsend & Stockton LLP, Raleigh, NC, argued for appellee. Also represented by Sean Paul DeBruine, Law Office of Sean DeBruine, Menlo Park, CA.

          Before Taranto, Plager, and Chen, Circuit Judges.

          CHEN, CIRCUIT JUDGE

         This is a consolidated appeal from two related decisions of the U.S. Patent and Trademark Office's Patent Trial and Appeals Board (Board) in inter partes review (IPR) proceedings. The Board concluded that the petitioner, Medtronic, Inc., had not proven that the challenged patent claims are unpatentable.

         We affirm-in-part and vacate-in-part. Substantial evidence supports the Board's determination that the challenged claims would not have been obvious over two references: 1) U.S. Patent Application No. 2005/0245928 (the '928 Application); and (2) a book chapter which appears in Masters Techniques in Orthopaedic Surgery: The Spine (2d ed.) (MTOS). However, we vacate the Board's conclusion that certain other references, i.e., a video entitled "Thoracic Pedicle Screws for Idiopathic Scoliosis" and slides entitled "Free Hand Thoracic Screw Placement and Clinical Use in Scoliosis and Kyphosis Surgery" (Video and Slides), were not prior art because the Board did not fully consider all the factors for determining whether the Video and Slides were publicly accessible. We thus remand for further proceedings.[1]

         Background

         Medtronic manufactures surgical systems and tools used in spinal surgeries. In February 2014, spine surgeon Dr. Mark Barry sued Medtronic for patent infringement in the Eastern District of Texas. Barry alleged that Medtronic's products infringed a group of Barry's patents, including U.S. Patent Nos. 7, 670, 358 (the '358 Patent) and 7, 776, 072 (the '072 Patent). Medtronic then petitioned for, and the Board instituted, IPR proceedings for all claims in both patents.

         I. The '358 Patent

         The '358 Patent is directed to a method for ameliorating aberrant spinal column deviation conditions, such as scoliosis. In addition to abnormal curvature of the spine, scoliosis may involve the rotation of vertebrae out of proper axial alignment. '358 Patent col. 2, ll. 51-56. The purported invention in the '358 Patent spreads corrective derotational (i.e., untwisting) forces across multiple vertebrae, thus reducing the risk of fracture during derotation. Id. at col. 3, ll. 15-25. The system includes pedicle screws implanted in the pedicle regions of vertebrae to which a surgeon, using a derotation tool, applies derotational forces. As a result, "the spinal column is manipulated en mass to achieve an over-all correction." Id. at col. 3, ll. 37-42.

         Figure 1 of the '358 Patent shows a "pedicle screw cluster derotation tool" engaged with a spinal column:

         (IMAGE OMITTED)

         As depicted in Figure 1, each pedicle screw cluster derotation tool (30) comprises a grouping of pedicle screw wrenches (32) connected by a linking member (42) to act in unison during use by a surgeon. Id. at col. 5, ll. 1-6. Each pedicle screw wrench (32) includes a handle (34) and a shaft (36) having a distal end (38) ("pedicle screw engagement member"), which is engaged with the pedicle screw. Id. at col. 5, ll. 12-18.

         By grasping the linked handles as a group ("handle means"), the surgeon can apply derotational forces during a spinal corrective procedure. Id. at col. 3, ll. 48-54. "[A]s manipulative forces are applied to the handle means . . . [such] forces are transferred and dispersed simultaneously among the engaged vertebrae." Id. at col. 3, ll. 56-59.

         Claim 1 of the '358 Patent is representative of the challenged claims for purposes of this appeal:

1. A method for aligning vertebrae in the amelioration of aberrant spinal column deviation conditions comprising the steps of:
selecting a first set of pedicle screws, said pedicle screws each having a threaded shank segment and a head segment;
selecting a first pedicle screw cluster derotation tool, said first pedicle screw cluster derotation tool having first handle means and a first group of pedicle screw engagement members which are mechanically linked with said first handle means, each pedicle screw engagement member being configured for engaging with, and transmitting manipulative forces applied to said first handle means to said head segment of each pedicle screw of said first set of pedicle screws,
implanting a each [sic] pedicle screw in a pedicle region of each of a first group of multiple vertebrae of a spinal column which exhibits an aberrant spinal column deviation condition;
engaging each pedicle screw engagement member respectively with said head segment of each pedicle screw of said first set of pedicle screws; and
applying manipulative force to said first handle means in a manner for simultaneously engaging said first group of pedicle screw engagement members and first set of pedicle screws and thereby in a single motion simultaneously rotating said vertebrae of said first group of multiple vertebrae in which said pedicle screws are implanted to achieve an amelioration of an aberrant spinal column deviation condition;
selecting a first length of a spinal rod member; wherein one or more of said pedicle screws of said first set of pedicle screws each includes:
a spinal rod conduit formed substantially transverse of the length of said pedicle screw and sized and shaped for receiving passage of said spinal rod member therethrough; and
spinal rod engagement means for securing said pedicle screw and said spinal rod member, when extending through said spinal rod conduit, in a substantially fixed relative position and orientation;
extending said first length of said spinal rod member through said spinal rod conduits of one or more of said pedicle screws of said first set of pedicle screws; and
after applying said manipulative force to said first handle means, actuating said spinal rod engagement means to secure said vertebrae in their respective and relative positions and orientations as achieved through application of said manipulative force thereto.

'358 Patent, claim 1 (emphasis added). The issues raised in Medtronic's appeal concern the italicized language of claim 1 set out above. We will refer to the language as the ...


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