CASE OF THE WEEK

Mark A. Barry v. Medtronic, Inc., Appeal No. 2017-2463 (Fed. Cir. Jan. 24, 2019)

On Thursday, the Federal Circuit issued a significant decision affirming the district court’s rulings related to the public-use and on-sale statutory bars, including what it means to be “ready for patenting,” and the experimental use exception.

The patents at issue concerned treatments for scoliosis, and concerned the use of a tool that Dr. Barry invented that manipulates vertebrae with screws. After inventing the tool, Dr. Barry had used his method in three surgeries in August 2003. He then saw the patients for follow-up visits between August 2003 and January 2004.

Dr. Barry filed his patent application on December 30, 2004, resulting in a critical use date of December 30, 2003 for pre-AIA 35 U.S.C. § 102(b) purposes. Defendant Medtronic alleged that the August 2003 surgeries rendered the patent invalid under Section 102(b) both as prior public uses and prior “sales” of the inventions. A jury found the patents valid and awarded Dr. Barry damages. The district court denied Medtronic’s motion for judgment as a matter of law that the patents were invalid under Section 102(b). Medtronic appealed.

ALSO THIS WEEK

Supernus Pharmaceuticals, Inc. v. Andre Iancu, Appeal No. 2017-1357 (Fed. Cir. Jan. 23, 2019)

In an appeal from the United States District Court for the Eastern District of Virginia, the Federal Circuit determined that the USPTO exceeded its statutory authority when issuing a reduction in patent term adjustment (PTA) for a drug patent based on unavoidable delay. The question before the Court was whether the USPTO may reduce PTA by a period that exceeds the “time during which the applicant failed to engage in reasonable efforts to conclude prosecution.” 35 U.S.C. § 154(b)(2)(C)(i). The Federal Circuit agreed with Supernus that there were no efforts that it could have taken during the vast majority of the delay. As such, the USPTO’s assessment was contrary to the plain meaning of the statute because the total reduction was not equal to a period of time during which Supernus failed to engage in reasonable efforts to conclude prosecution. As such, the Federal Circuit reversed the District Court’s final judgment.

The opinion can be found here.

Princeton Digital Image Corp. v. Office Depot Inc., Appeal No. 2017-2597 (Fed. Circ. Jan. 22, 2019)

In this appeal from a final judgment entered in the U.S. District Court for the District of Delaware, the Federal Circuit addressed the issue of jurisdiction under 28 U.S.C. § 1295. Princeton Digital had sued Adobe for patent infringement, but Adobe showed that the case was baseless. Adobe sought damages from the baseless lawsuit. But the district court substantially limited Adobe’s request for damages prior to trial, rendering further litigation possibly financially unreasonable. To accelerate the district court’s damage-limiting decision toward appeal, Adobe had requested that final judgment be entered because it claimed it had no damages to present. The Federal Circuit reversed, holding that the “final judgment” entered in the district court lacked the finality required by the Federal Rules to warrant appellate jurisdiction. Likening the district court’s damages ruling to a claim construction order that does not resolve the issue of infringement, the Court found that because Adobe could have proceeded to trial on one of its claims, there was no final decision on the merits, even though Adobe “persuade[d] [the] district court to issue an order purporting to end the litigation.”

The opinion can be found here.

Written by: Scott Eads and Nika Aldrich, Schwabe, Williamson & Wyatt

Contributors: Karri Kuenzli Bradley, Angela Addae, Erin Forbes

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