Demonstration of Fully Functional Prototype at Industry Trade Show Renders Asserted Claims Invalid Under Public Use Bar

In Minerva Surgical, Inc. v. Hologic, Inc., No. 2021-2246 (Fed. Cir. Feb. 15, 2023), the Federal Circuit affirmed the District of Delaware’s grant of summary judgment that the asserted claims of U.S. Patent No. 9,186,208 (“the ’208 patent”) are anticipated under the public use bar of 35 U.S.C. § 102(b).

The ’208 patent is directed to surgical devices for endometrial ablation to stop or reduce abnormal uterine bleeding. After Minerva sued Hologic for infringement, Hologic moved for summary judgment of invalidity under the public use bar. Hologic argued that more than one year before the ’208 patent’s priority date, Minerva brought 15 fully functional prototypes to an industry event to showcase the device and that the device disclosed every limitation of the asserted claims. The district court granted Hologic’s motion finding that the display and demonstration of the prototypes at the trade show constituted public use, that the prototypes embodied the asserted claims, and that the prototypes showed the invention was ready for patenting.

The Federal Circuit affirmed, rejecting each of Minerva’s arguments. First, the Court found that Minerva’s disclosure of the prototypes at the trade show went “well beyond” “mere display.” Minerva provided a demonstration, which allowed the sophisticated members of the audience, who were under no confidentiality obligation, to determine how the prototypes worked. Second, based on testimony from the inventor and feedback from event participants, the Court found that the prototypes practiced each element of the asserted claims. And lastly, subsequent “fine tuning” cannot support a finding that the device was not ready for patenting where Minerva had reduced the invention to practice by creating working prototypes that embodied the claims.