CAFC Remands for Further Fact-Finding on Public Accessibility of a Video and Presentation Asserted as Prior Art

In Medtronic, Inc. v. Barry, Nos. 17-1169, 17-1170 (June 11, 2018), Medtronic appealed PTAB decisions in two IPR proceedings upholding all challenged claims directed to pedicle screws for spinal derotation surgery.  The CAFC affirmed the PTAB’s determination of nonobviousness in the first proceeding.  But in the other, the Court vacated the PTAB’s conclusion that a video and slide presentation were insufficiently publicly accessible to qualify as printed publications, and remanded for further fact-finding.

The video had been distributed at three conferences across the United States, attended by 20 to 55 spinal surgeons.  Copies of the presentation had been distributed at two of the same conferences.  Notably, the video and presentation had not been stored for public access following the conferences. 

Under these circumstances, the printed-publication inquiry required analyzing whether the video and presentation were sufficiently disseminated at the time of their distribution at the conferences.  The CAFC instructed the PTAB to further analyze, on remand, (1) the size and nature of the conferences, (2) whether the conferences were open to people interested in the subject matter disclosed, and (3) whether an expectation of confidentiality of the materials existed.