Barry v. Medtronic, Inc.

914 F.3d 1310

Mark A. BARRY, Plaintiff-Appellee

v.MEDTRONIC, INC., Defendant-Appellant

2017-2463

United States Court of Appeals, Federal Circuit.

Decided: January 24, 2019

David Clay Holloway, Kilpatrick Townsend & Stockton LLP, Atlanta, GA, argued for plaintiff-appellee. Also represented by Courtney Dabbiere ; Adam Howard Charnes, Dallas, TX; Erwin Cena, San Diego, CA; Dario Alexander Machleidt, Seattle, WA; Sean Paul Debruine, Law Office of Sean DeBruine, Menlo Park, CA.

Seth P. Waxman, Wilmer Cutler Pickering Hale and Dorr LLP, Washington, DC, argued for defendant-appellant. Also represented by Brittany Blueitt Amadi; Mark Christopher Fleming, Boston, MA; Mary-Olga Lovett, Greenberg Traurig LLP, Houston, TX; Julie Pamela Bookbinder, Scott Joseph Bornstein, Allan A. Kassenoff, Richard Charles Pettus, New York, NY.

Before Prost, Chief Judge, Moore and Taranto, Circuit Judges.

Opinion dissenting in part filed by Chief Judge PROST.

Taranto, Circuit Judge.

Dr. Mark Barry brought this action against Medtronic, Inc., alleging that Medtronic induced surgeons to infringe U.S. Patent Nos. 7,670,358 and 8,361,121, which Dr. Barry owns and which name him as the sole inventor. The jury found infringement of method claims 4 and 5 of the '358 patent and system claims 2, 3, and 4 of the '121 patent, rejected Medtronic's several invalidity defenses, and awarded damages. In post-trial rulings on the jury issues, Barry v. Medtronic, Inc. , 230 F.Supp.3d 630 (E.D. Tex. 2017) ( Barry ), the district court upheld the verdict as relevant here—rejecting challenges as to induced infringement and associated damages for domestic conduct, id. at 640–47, 650–51, invalidity of the asserted '358 patent claims under the public-use and on-sale bars, id. at 653–59, and invalidity of all asserted claims due to another's prior invention, id. at 659–63. The district court then rejected Medtronic's inequitable-conduct challenge, Barry v. Medtronic, Inc. , 245 F.Supp.3d 793, 823 (E.D. Tex. 2017) ( Inequitable Conduct Op. ), and, in a ruling not separately challenged on appeal, enhanced damages by twenty percent while denying attorney's fees to Dr. Barry, Barry v. Medtronic, Inc. , 250 F.Supp.3d 107, 111, 119 (E.D. Tex. 2017) ( Enhancement Op. ). Medtronic appeals on numerous grounds, principally concerning the public-use and on-sale statutory bars, but also concerning prior invention, inequitable conduct, and induced infringement and associated damages. We affirm.

I

A

Both patents at issue are entitled "System and Method for Aligning Vertebrae in the Amelioration of Aberrant Spinal Column Deviation Conditions." The patents claim methods and systems for correcting spinal column anomalies, such as those due to scoliosis, by applying force to multiple vertebrae at once. '358 patent, col. 2, line 63, through col. 3, line 6; '121 patent, col. 3, line 53, through col. 4, line 2. The '358 issued in 2010 from an application that Dr. Barry filed on December 30, 2004. The '121 patent issued in 2013 from an application—a continuation of an August 2005 application that was a continuation-in-part of the December 30, 2004 application—that Dr. Barry filed in 2010.

The asserted claims of the '358 patent are method claims 4 and 5. They depend ultimately on independent claim 1, which reads:

1. A method for aligning vertebrae in the amelioration of aberrant spinal column deviation conditions comprising the steps of:

selecting a first set of pedicle screws, said pedicle screws each having a threaded shank segment and a head segment;

selecting a first pedicle screw cluster derotation tool, said first pedicle screw cluster derotation tool having first handle means and a first group of pedicle screw engagement members which are mechanically linked with said first handle means, each pedicle screw engagement member being configured for engaging with, and transmitting manipulative forces applied to said first handle means to said head segment of each pedicle screw of said first set of pedicle screws,

implanting each pedicle screw in a pedicle region of each of a first group of multiple vertebrae of a spinal column which exhibits an aberrant spinal column deviation condition;

engaging each pedicle screw engagement member respectively with said head segment of each pedicle screw of said first set of pedicle screws; and

applying manipulative force to said first handle means in a manner for simultaneously engaging said first group of pedicle screw engagement members and first set of pedicle screws and thereby in a single motion simultaneously rotating said vertebrae of said first group of multiple vertebrae in which said pedicle screws are implanted to achieve an amelioration of an aberrant spinal column deviation condition;

selecting a first length of a spinal rod member; wherein one or more of said pedicle screws of said first set of pedicle screws each includes:

a spinal rod conduit formed substantially transverse of the length of said pedicle screw and sized and shaped for receiving passage of said spinal rod member therethrough; and

spinal rod engagement means for securing said pedicle screw and said spinal rod member, when extending through said spinal rod conduit, in a substantially fixed relative position and orientation;

extending said first length of said spinal rod member through said spinal rod conduits of one or more of said pedicle screws of said first set of pedicle screws ; and

after applying said manipulative force to said first handle means, actuating said spinal rod engagement means to secure said vertebrae in their respective and relative positions and orientations as achieved through application of said manipulative force thereto.

'358 patent, col. 6, lines 7–56. Claim 2, which depends on claim 1, adds steps requiring a second set of pedicle screws and a second derotation tool with a second group of engagement members and a second "handle means." Id. , col. 6, line 57, through col. 7, line 15. Claim 3, which depends on claim 2, adds steps requiring a second spinal rod. Id. , col. 7, line 16, through col. 8, line 11. Claim 4, which depends on claim 3, adds that the steps of applying "manipulative force" to the first and second handle means "are carried out substantially simultaneously to cooperatively achieve an amelioration of an aberrant spinal column deviation condition." Id. , col. 8, lines 12–17. Claim 5 adds the same requirement to claim 2 (on which it depends). Id. , col. 8, lines 18–23.

The asserted claims of the '121 patent are system claims 2–4. Claim 2, an independent claim, reads:

2. A system for aligning vertebrae in the amelioration of aberrant spinal column deviation conditions comprising:

a first set of pedicle screws, each pedicle screw having a threaded shank segment and a head segment; and

a first pedicle screw cluster derotation tool, said first pedicle screw cluster derotation tool having a first handle means for facilitating simultaneous application of manipulative forces to said first set of pedicle screws and a first group of three or more pedicle screw engagement members which are mechanically linked with said first handle means, said first handle means having a handle linked to each pedicle screw engagement member of the first group of three or more pedicle screw engagement members and a linking member to join together the handles linked to the pedicle screw engagement members, wherein the handle means is configured to move simultaneously each pedicle screw engagement member; wherein each pedicle screw engagement member is configured to engage respectively with said head segment of each pedicle screw of said first set of pedicle screws; and wherein each pedicle screw engagement member is configured to transmit manipulative forces applied to said first handle means to said head segment of each pedicle screw of said first set of pedicle screws;

a second set of pedicle screws, each pedicle screw having a threaded shank segment and a head segment;

a second pedicle screw cluster derotation tool, said second pedicle screw cluster derotation tool having a second handle means for facilitating simultaneous application of manipulative forces to said second set of pedicle screws and a second group of three or more pedicle screw engagement members which are mechanically linked with said second handle means, said second handle means having a handle linked to each pedicle screw engagement member of the second group of three or more pedicle screw engagement members and a handle linking member to join together the handles linked to the pedicle screw engagement members, wherein the handle means is configured to move simultaneously each pedicle screw engagement member; wherein each pedicle screw engagement member is configured to engage respectively with said head segment of each pedicle screw of said second set of pedicle screws; and wherein each pedicle screw engagement member is configured to transmit manipulative forces applied to said second handle means to said head segment of each pedicle screw of said second set of pedicle screws;a cross-linking member that links the first handle means to the second handle means.

'121 patent, col. 7, line 57, through col. 8, line 45. The parties have highlighted the "cross-linking member" element in identifying the advance of the '121 patent claims over those of the '358 patent. Claim 3, which depends on claim 2, and claim 4, which depends on claim 3, add requirements that have had no material role in the arguments made to this court. Id. , col. 8, lines 46–58.

B

The following facts form the core of the background needed to understand the issues before us. Dr. Barry began working in late 2002 or early 2003 on trying to link derotation components (which grab screws in vertebrae to move the vertebrae) of devices for ameliorating spinal column deviation conditions. During 2003 he worked with a sales representative from the DePuy medical-device company, Mr. Pfefferkorn, to adjust standard DePuy tools for Dr. Barry's purposes and in...