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Barry v. Medtronic, Inc.

United States Court of Appeals for the Federal Circuit

January 24, 2019, Decided



 [*1316]  [***1250]   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 [**2]  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.

 [*1317]  I

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914 F.3d 1310 *; 2019 U.S. App. LEXIS 2305 **; 129 U.S.P.Q.2D (BNA) 1248 ***

MARK A. BARRY, Plaintiff-Appellee v. MEDTRONIC, INC., Defendant-Appellant

Subsequent History: US Supreme Court certiorari denied by, Motion granted by Medtronic, Inc. v. Barry, 2020 U.S. LEXIS 17 (U.S., Jan. 13, 2020)

Prior History:  [**1] Appeal from the United States District Court for the Eastern District of Texas in No. 1:14-cv-00104-RC, Chief Judge Ron Clark.

Barry v. Medtronic, Inc., 245 F. Supp. 3d 793, 2017 U.S. Dist. LEXIS 47392 (E.D. Tex., Mar. 24, 2017)

Disposition: AFFIRMED.


invention, patent, intended purpose, surgeries, inventor, screw, pedicle, experimental, patients, infringement, follow-up, public use, experimental use, derotation, conditions, vertebrae, testing, reduction to practice, engagement, handle, invalidity, amelioration, critical date, surgeons, spinal column, customers, deviation, linked, correction, induced

Civil Procedure, Appeals, Standards of Review, De Novo Review, Trials, Judgment as Matter of Law, Abuse of Discretion, Judgments, Relief From Judgments, Motions for New Trials, Jury Trials, Jury Instructions, Evidence, Admissibility, Procedural Matters, Rulings on Evidence, Patent Law, Statutory Bars, Public Use Bar, Elements, Jurisdiction & Review, Fact & Law Issues, Business & Corporate Compliance, Patent Law, Experimental Use Exception, Province of Court & Jury, Types of Evidence, Testimony, Credibility of Witnesses, Claims, Claim Parts, Preambles, Experimental Use Exception, On Sale Bar, Jury Instructions, General Overview, Standards of Review, Invention Date & Priority, Reduction to Practice, Clearly Erroneous Review, Inequitable Conduct, Effect, Materiality & Scienter, Infringement Actions, Infringing Acts, Indirect Infringement