You Use It, You Lose (Protection Over) It: Federal Circuit Clarifies Public-Use Bar Requirements
The United States Court of Appeals for the Federal Circuit issued a precedential opinion earlier this year in Minerva Surgical, Inc. v. Hologic, Inc. clarifying the “in public use” bar under pre-America Invents Act 35 USC 102.1
Minerva Surgical, Inc., (“Minerva”) and Hologic, Inc., (“Hologic”) are no strangers to each other. Minerva and Hologic are competitors who both sell medical devices that are used for ablating urine endometrial tissue.2 Moreover, in a previous legal dispute between these two competitors, the Supreme Court clarified the doctrine of assignor estoppel. See Minrva v. Hologic: Assignor Estoppel Doctrine Retained, But Limited written by Haug Partners’ Jonathan Herstoff, Partner, and Chinmay Bagwe, Associate.3
Fast forward a year, Minerva and Hologic are back at it again, but this time at the Court of Appeals for the Federal Circuit. The appeal arises from Minerva suing Hologic for infringement of U.S. Patent No. 9,186,208, (“’208 Patent”) entitled “System for Endometrial Ablation”.4 The Federal Circuit’s opinion used Fig. 9 of the ‘208 patent to explain the claimed device for endometrial ablation.5
The United States District Court for the District of Delaware granted summary judgment on behalf of Hologic stating that the relevant claims of the patent in question were anticipated under the pre-A1A public use bar.6 The District Court further explained that Minerva showed a device publicly, that contained all the limitations of the ‘208 patent more than a year before the ‘208 patent’s priority date.7
The issue on appeal concerned whether the claim term found in claim 13 of the ‘208 Patent8, “the inner and outer elements have substantially dissimilar materials properties”, was publicly shown more than a year prior to the pre-A1A priority date.
In 2009 Minerva showcased a device called “Aurora” to the 38th Global Congress of Minimally Invasive Gynecology sponsored by the American Association of Gynecologic (“AAGL”).9 Hologic argued in their brief for summary judgment that 1) Minerva showed the Aurora device to the public in detail more than a year before the priority date for the ‘208 patent, and that 2) the Aurora device disclosed every limitation of the asserted claims.10
The Federal Circuit ultimately affirmed the District Court’s grant for summary judgement for Hologic concluding that Hologic was entitled to judgment as a matter of law because the ‘208 patent was anticipated under the pre-A1A public use bar.11
The Federal Circuit opinion, written by Judge Reyna, explained that Minerva’s display of the Aurora device in 2009 went “well beyond” merely displaying the device. The court stated that “the public use bar is triggered where, before the critical date, the invention is [(1)] in public use and [(2)] ready for patenting.”12
Minerva’s argument on appeal was three threefold. Minerva argued that 1) the disclosure at the AAGL in 2009 was not “in public use” because Minerva “merely displayed” the device, 2) the Aurora lacked the properties claimed in the claim term of claim 13 at the time the Aurora was shown at AAGL, and 3) the invention in the ‘208 patent was not ready for patenting because Minerva was still improving the invention at the time of AAGL 2009.13
The Federal Circuit’s panel disagreed with all three of Minerva’s contentions.
First, the panel stated that Minerva’s disclosure in 2009 was consistent with public use because the Aurora device was “shown to … individual[s] other than the inventor under no limitation, restriction, or obligation of confidentiality.”14 Minerva further argued that no public use occurred because the observers at the AAGL 2009 were not allowed to “closely observe or physically handle” the Aurora device.15 The panel disagreed with Minerva explaining that “public use may also occur where, as here, the inventor used the device such that at least one member of the public without any secrecy obligations understood the invention,” citing Netscape Commc’ns Corp. v. Konrad, 295 F.3d 1315, 1319–21 (Fed. Cir. 2002).16
Second, the panel stated that the Aurora Minerva showed in 2009 had all the limitations of the ‘208 patent.17 Specifically, the panel pointed at documentation by Minerva before and shortly after the AAGL 2009 in which the documents explicitly disclosed that the Aurora device had the term from claim 13 (“the inner and outer elements have substantially dissimilar materials properties”).18
Lastly, the panel concluded that the Aurora device was ready for patenting when shown at the AAGL 2009 because Minerva “brought 15 fully functional” Aurora devices that were put to practice.19 This was supported by inventor testimony that explained the function of the Aurora and how it incorporated the claim term from claim 13 back in 2009 at the AAGL.20
Ultimately, the Federal Circuit affirmed the district’s court’s grant of summary judgment for Hologic because Minerva showed its invention, disclosing all the limitations in claim 13, to others under no obligation of confidentiality more than a year before the ‘208 patent’s priority date.
This Federal Circuit decision is a lesson to inventors and future patent owners: Showing a working prototype at conferences, trade shows, or exhibitions, even if the prototype is not yet in finish form, can start the one-year countdown to file a patent application.
This lesson applies to patent owners pre-A1A who filed a patent application before March 16, 2013, and patent owners post A1A. According to the post-A1A bar, a patent cannot be obtained if the invention was “on sale, or otherwise available to the public” anywhere in the world one year or more before the effective filing date of the claimed invention.21