Medtronic Patent Suit Offers “Marking” Lesson for Surgeons

Mark Barry, M.D. sued Medtronic plc in February 2014 alleging that the company infringed on his patents covering scoliosis treatments.

The lawsuit offers some lessons for surgeons on the proper way to protect their inventions.

Barry claimed that the company’s CD Horizon Legacy spinal system infringed on his patent entitled, “System and Method for Aligning Vertebrae in the Ameliorating of Aberrant Spinal Column Deviation Conditions.” According to court documents reported by MassDevice in July, the patent claims cover a “method for aligning vertebrae with a tool that allows a single surgeon to rotate the spinal column as a whole, using pedicle screws, spinal rods and a ‘pedicle screw cluster derotational tool.’”

Failure to Mark

A federal judge ruled in mid-July that he won’t dismiss the case, but also said the company won’t be subject to pre-case damages on all of the patents. Medtronic has asked for a summary judgement against Barry’s suit alleging prior public use of the invention and that Barry failed to mark the patents and is therefore not entitle to pre-suit damages.

The judge for the U.S. District Court for Eastern Texas, Ron Clark, disagreed with Medtronic’s public use claim, but partially agreed with the company over the pre-suit damages. But, Judge Clark ruled that the company can’t, according to MassDevice, “escape Barry’s inducement and contributory infringement claims.”

“Medtronic has not established its prima facie case by clear and convincing evidence that the entire invention was in public use more than 1 year before the priority date of the parent patent. Dr. Barry has raised a genuine issue of fact as to whether any prior use was experimental, ” Clark wrote in the July 21 rulings. “Dr. Barry’s testimony that the first complete public use of the invention was a private surgery attended by a small group of hospital workers suggests that the ‘nature of the activity’ and ‘public access’ was limited. There is a fact issue as to confidentiality, based on affidavits submitted by individuals who had previously worked with Dr. Barry.”

On the induced and contributory infringement claims, MassDevice reported that the judge found that “Dr. Barry’s evidence at least establishes a fact question as to whether Medtronic ‘subjectively believe[d] that there [was] a high probability’ of infringement and took ‘deliberate actions to avoid learning of that fact.’” The judge also ruled that, because Barry failed to mark 2 of the 3 patented articles with “patent” or “pat, ” he isn’t entitled to pre-suit damages on those devices.