BARRY v. MEDTRONIC, INC.

Before Chief Judge Prost, Moore, and Taranto.  Appeal from the United States District Court for the Eastern District of Texas.

Summary:  An invention is not “ready for patenting” to trigger a public use bar until the invention has been tested in a variety of settings and is known to work for its intended purpose.

Dr. Barry sued Medtronic for infringing patents related to correcting spinal column anomalies, like scoliosis.  From 2002 to 2003, Dr. Barry developed a surgical tool that is the subject of the asserted patents.  In August and October 2003, he used the tool in three surgeries.  Dr. Barry had post-surgical visits with each patient—two visits occurred in November 2003 and the last visit occurred in January 2004.  Dr. Barry filed for his patent on December 30, 2004, making December 30, 2003 the critical date for purposes of the public use bar.  During trial, Medtronic asserted that Dr. Barry successfully used his invention and knew his invention worked before the critical date.  Dr. Barry argued that, although he used his invention in three surgeries, he did not know his invention would work until his last follow-up visit in January 2004.  The jury found for Dr. Barry.

The Federal Circuit affirmed. The Federal Circuit acknowledged that Dr. Barry knew he had successfully performed two surgeries before the critical date. But Dr. Barry did not determine his invention would work for its intended purpose until after his final follow-up visit, which was after the critical date.  The Federal Circuit held that an inventor cannot know his invention works for its intended purpose until it has been tested in a variety of real-world settings.  Here, the three surgeries represented the three most common types of scoliosis.  Because each type of scoliosis represented a different setting where Dr. Barry’s invention would operate, Dr. Barry did not know his invention would work for its intended purpose until he was sure it could treat all three common types of scoliosis.  

Chief Judge Prost dissented, writing that the decision improperly broadened the scope of “intended purpose.”  According to Chief Judge Prost, a patent’s intended purpose should be defined by the patent’s claims and specification. Chief Judge Prost believed the intended purpose was to adjust a patient’s vertebrae, and this was achieved twice before the critical date.  To require a third successful surgery to meet the intended purpose prong goes beyond what was stated in the claims and specification.