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TAKEAWAY: Use of an invention in a surgical procedure may not amount to a public use because the invention was not “ready for patenting” until follow-up patient visits proved the invention worked for its intended purpose.

In Mark A. Barry v. Medtronic, Inc. (Fed. Cir. 2019), the Federal Circuit upheld Dr. Barry’s patents directed to devices and methods for surgically realigning vertebrae. The court found that three surgeries conducted by Dr. Barry before the critical dates were not invalidating public uses of the invention.

Consistent with public use precedent, the Federal Circuit looked at 1) was the invention in public use, and 2) was the invention “ready for patenting.” The Court found that Dr. Barry’s invention was not ready for patenting until after follow-up visits with the patients from each surgery. The Court reasoned that the final follow-up visit from the third surgery was reasonably needed for the determination that the invention worked for its intended purpose, as it was standard-practice to have follow-up appointments with patients to assess the patient’s recovery and results of the surgery.

The Court also found that there was no public use. The Court found substantial evidence that Dr. Barry’s surgeries were not exposed or accessible to the public. The evidence showed that Dr. Barry himself was the only person to have practiced the invention, Dr. Barry maintained control of the invention, and those present in the operating room were under an implied duty of confidentiality. Even though six people were present in the operating room with Dr. Barry, the court reasoned that those in the operating room would have had a general understanding of confidentiality covering at least the tools and techniques used in the surgery. In addition, the Court determined that regardless of whether the surgeries were public uses, the surgeries were experimental uses and thus could not invalidate the patents under the public use bar.