The Federal Circuit vacated and remanded the PTAB’s decision that a video demonstration and slides distributed by Petitioner Medtronic at three industry meetings and conferences were not publicly accessible and, thus, were not “printed publications.” Medtronic, Inc. v. Barry, Case no. 17-1169, 2018 WL 2769092 (Fed. Cir. June 11, 2018). Recent Board decisions have set a high bar for proving that materials were publicly accessible. We have previously discussed examples here, here, and here. In Medtronic, the Federal Circuit provides factors that the Board should consider in these determinations.

Dr. Mark Barry sued Medtronic for infringement of two patents, U.S. 7,670,358 and U.S. 7,776,072 relating to medical devices for use in spinal surgery. Medtronic challenged the validity of both patents in the PTAB, relying on three pieces of prior art: (1) a published patent application; (2) a chapter from an orthopedic surgery book; and (3) a video and slides Medtronic distributed to spinal surgeons at industry meetings and conferences. In its final written decision, the Board determined that the video and slides were not prior art because they are not printed publications within the meaning of 35 U.S.C. § 102(b).

Medtronic submitted evidence that a CD containing the video was distributed at three conferences in 2003. Binders containing relevant portions of the slides were also distributed at two other programs in 2003. A Medtronic witness described one of the conferences, the Spinal Deformity Study Group (“SDSG”) as “a gathering of experts within the field of spinal deformity.” Members of the group are experts voted into membership by an executive board based on their qualifications. Dr. Barry argued that, because the video and slides were only made available to experts who are part of a group of limited membership, the materials were not publicly accessible to ordinary artisans. Medtronic argued that the materials were also circulated to surgeons who are not member of the SDSG, but even if they were not, SDSG members are the interested public at issue in a § 102(b) determination. The Board agreed with Dr. Barry that Medtronic had not sufficiently shown that the materials would have been made available outside the expert membership of the SDSG.

On appeal, the Federal Circuit reiterated that determining whether a documents is a “printed publication” under § 102(b) involves “a case-by-case inquiry into the facts and circumstances surrounding the references disclosure to members of the public.” Id. at *19 (citing In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)). “A reference will be considered publicly accessible if it was ‘disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence[] can locate it.’” Id.

In considering the context of materials distributed to groups of people at meetings, the court noted that “[w]e have stated that a printed publication ‘need not be easily searchable after publication if it was sufficiently disseminated at the time of its publication.’” Id. (citing Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358, 1365 (Fed. Cir. 2014)). Accordingly, the question is whether the materials were sufficiently disseminated at the conferences. The court reviewed previous decisions and identified some factors that had been considered in previous determinations about the public accessibility of materials distributed at meetings:

  1. the size and nature of the meeting;
  2. whether the meeting is open to people interested in the subject matter of the material disclosed;
  3. whether there is an expectation of confidentiality;
  4. the expertise of the target audience; and
  5. the purpose of the meeting.

The Federal Circuit determined that the mere fact that the SDSG members were experts does not, without further basis, render the distributed materials publicly accessible or inaccessible. Id. at 23. Rather, the Board should consider the nature of the meetings, any confidentiality restrictions or expectations, or, alternatively, any expectations that the materials could be shared. The Board erred in failing to consider all relevant factors and excluding certain of the meetings where materials were distributed to non-SDSG members from its analysis.