Medtronic, Inc. v. Barry, No. 17-1169 (Fed. Cir. 2018)Annotate this Case
Medtronic manufactures surgical systems and tools used in spinal surgeries. Spine surgeon Dr. Barry sued Medtronic for patent infringement. Medtronic then petitioned for, and the Patent Board instituted, inter partes review (IPR) proceedings for all claims in both patents. The Board concluded that Medtronic had not proven that the challenged patent claims are unpatentable. The Federal Circuit affirmed in part. Substantial evidence supports that the challenged claims would not have been obvious over two references. The court vacated the Board’s conclusion that certain other references, including 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” were not prior art because the Board did not fully consider all the factors for determining whether they were publicly accessible. The court noted that the Supreme Court recently held that the statute does not permit a partial institution leading to a partial final written decision and that the final written decisions relating to this appeal do not address every ground raised in the petitions, so the Board will consider the previously non-considered grounds on remand.