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Last week, the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/21-2246.OPINION.2-15-2023_2081255.pdf"><em>Minerva Surgical, Inc. v. Hologic, Inc. et al</em></a>, No. 2021-2246 (February 15, 2023), affirming the district court’s grant of summary judgment on invalidity under the public use bar of pre-AIA 35 U.S.C. §&nbsp;102(b).

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Appellant Minerva is the assignee of U.S. Patent No. 9,186,208 (the “’208” patent), which was filed on November 2, 2012, and claims a priority date of November 7, 2011. The ’208 patent is directed to surgical devices for performing endometrial ablation to stop or reduce abnormal uterine bleeding. Representative claim 13 of the patent discloses, <em>inter alia</em>, a claim term (the “SDMP” term) requiring “the inner and outer elements [of the invention’s frame to] have substantially dissimilar material properties”.

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Minerva sued Hologic, Inc. and Cytyc Surgical Products, LLC (collectively “Hologic”), in the District of Delaware, alleging Hologic infringed the ’208 patent. After discovery, Hologic moved for summary judgment of anticipation. Hologic pointed to evidence that Minerva disclosed multiple devices having the SDMP technology at an industry event in November 2009, well before the critical date of the ’208 patent. The district court granted summary judgment, holding the invention was in public use and ready for patenting in 2009.

Minerva appealed, raising three arguments: (1) the devices disclosed were not “in public use” because they were “merely displayed”; (2) there was no disclosure because the devices lacked the SDMP element; and (3) the invention was not “ready for patenting” because Minerva was still improving the SDMP technology and it did not yet function for its intended use in “live human” tissue.

The Federal Circuit affirmed the district court’s grant of summary judgment. It held the 2009 disclosure was a public use because the undisputed facts led to the “inescapable” conclusion that Minerva permitted knowledgeable individuals sufficient access to recognize and understand the SDMP technology, and no confidentiality obligations were imposed on those individuals. Further, the Court held there was no genuine factual dispute that the devices disclosed in 2009 disclosed the SDMP element, because Minerva’s own documentation from the time described them having the SDMP technology or touted the benefits derived therefrom. Finally, the Court rejected Minerva’s ready for patenting argument, holding that being ready for “live human” use was more than the case law required and that the contemporary documentation was sufficiently specific to enable a POSITA to practice the invention.

02_21_23 CAFC Affirms Invalidity Under Pre-AIA 35

CAFC Affirms Invalidity Under Pre-AIA 35 U.S.C. § 102(b)

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