Federal Circuit Finds Disclosure Of Devices At Major Industry Event Constituted “Public Use” That Barred Patenting
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  • Federal Circuit Finds Disclosure Of Devices At Major Industry Event Constituted “Public Use” That Barred Patenting
     
    02/28/2023
    On February 15, 2023, the Federal Circuit affirmed a district court’s grant of summary judgment of invalidity under the public use bar of pre-AIA 35 U.S.C. § 102(b), based on the patentee’s disclosure of devices having the patented technology at an industry event.  Minerva Surgical, Inc. v. Hologic, Inc., No. 2021-2246 (Fed. Cir. Feb. 15, 2023).  The Court found that the patentee had allowed sophisticated industry members to scrutinize the devices closely, such that they would have understood the invention, without any obligations of confidentiality.

    Plaintiff Minerva Surgical, Inc. (“Minerva”) sued Hologic, Inc. and Cytyc Surgical Products, LLC for infringement of U.S. Patent No. 9,186,208, directed to a surgical device used for endometrial ablation.  Defendants moved for summary judgment of invalidity, arguing that the asserted claims were anticipated under the public use bar of pre-AIA 35 U.S.C. § 102(b).  Defendants asserted that more than a year before the ’208 patent’s critical date, Minerva had brought its Aurora device, which disclosed every limitation of the asserted claims, to an industry event (AAGL 2009)—which a named inventor and Minerva’s then-CEO described as “the Super Bowl of [the] industry.”  The district court granted summary judgment, finding no genuine dispute that the demonstration of the Aurora device at AAGL 2009 constituted public use, that the device disclosed the asserted claims, and that the invention was ready for patenting at the time.  The Federal Circuit affirmed.

    With respect to public use, Minerva argued that, under Motionless Keyboard Co. v. Microsoft Corp., 486 F.3d 1376 (Fed. Cir. 2007), “mere display” of the Aurora device at AAGL 2009 did not rise to the requisite level of public use under § 102(b).  The Federal Circuit disagreed because Minerva’s disclosure at AAGL 2009 went “well beyond” that at issue in Motionless Keyboard.  The Federal Circuit noted that it did not matter if the device was physically handled by the public, so long as “the inventor used the device such that at least one member of the public without any secrecy obligations understood the invention.”  Here, the evidence showed that Minerva pitched the Aurora device to multiple sophisticated industry members, allowed them to scrutinize the device closely and see how it operated, and received detailed feedback, leading to the “inescapable conclusion” that there had been public use.

    The Court also rejected Minerva’s arguments that the Aurora device did not embody the claims and that the invention was not ready for patenting.  Thus, the Court agreed with the district court’s conclusion that there was no genuine issue of material fact that the public use bar of § 102(b) was met, and affirmed the grant of summary judgment.
    CATEGORIES: Anticipation, Invalidity, IP Litigation, Medical Devices

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