CALL US: 206.533.3854
CALL US  206.533.3854
AEON Law logo full color transparent
By University of Utah Hospital - Radiology Department - X-ray subject, Public Domain,

Video and Slides Can Be “Prior Art”

Video and slides
shown to a group of experts
can be “prior art”

The Federal Circuit has ruled that a video and slides shown to a select group of experts could qualify as “prior art” that would invalidate a patent application.

The decision arose from a patent infringement lawsuit by spine surgeon Dr. Mark Barry against Medtronic, which manufactures surgical systems and tools used in spinal surgeries.

Barry alleged that Medtronic infringed two of his patents for a method for ameliorating aberrant spinal column deviation conditions, such as scoliosis.

In its defense, Medtronic submitted prior art references including a video demonstration and a related slide presentation to spinal surgeons at various industry meetings and conferences in 2003.

The Patent and Trademark Office’s Patent Trial and Appeals Board (PTAB) found that the video and slides, although presented at three different meetings in 2003, weren’t publicly accessible and therefore were not “printed publications,” in accordance with 35 U.S.C. § 102. As a result, the PTAB refused to consider these materials as prior art in its evaluation of the patents.

Medtronic argued that the PTAB committed legal error in concluding that the video and slides weren’t sufficiently accessible to the public. According to Medtronic, the PTAB’s sole basis for this conclusion rested on its faulty assumption that the materials were distributed only to members of the Spinal Deformity Study Group (SDSG).

Medtronic pointed out that the PTAB improperly ignored evidence that the video and slides were distributed at programs that were not limited to SDSG members. Also, Medtronic contended that a prior art reference need only be accessible to the “interested public” to satisfy the public accessibility requirement, and that members of the SDSG fall within that category.

As the court noted,

A reference will be considered publicly accessible if it was `disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence can locate it.’

The court concluded:

whether dissemination of the Video and Slides to a set of supremely-skilled experts in a technical field precludes finding such materials to be printed publications warrants further development in the record.

Thus, the court remanded for further proceedings.

The case is Medtronic, Inc. v. Barry.

Related Articles

Supreme Court: No Time Limit on Monetary Recovery in Copyright Cases

The US Supreme Court has ruled in favor of Sherman Nealy, a record producer who sued Warner Music for copyright infringement over a 2008 song by ...
Read More

Patent Office Requests Public Comment on AI Prior Art

The US Patent and Trademark Office (USPTO) has published a request for comment (RFC) on “how AI could affect evaluations of how the level of ordinary skills ...
Read More

FTC Bans Employee Non-Compete Agreements

The Federal Trade Commission (FTC) has voted to approve a proposed rule that would ban employers from using non-compete agreements with nearly all employees. The ...
Read More

Let's work together.

Contact us to set up a meeting with an attorney or team member.

Stay Informed

Sign up to receive Patent Poetry—a monthly roundup of key IP issues in our signature haiku format. Four articles (only 68 syllables); zero hassle.



Artificial Intelligence

Blockchain & Cryptocurrency

Computer Technology & Software

Consumer Electronics

Electrical Devices



Mechanical Devices

Consumer & Retail Products

Hardware & Tools

Toys & Games



Chemical Compounds

Digital Health

Healthcare Products



Books & Publications

Brand Creation

Luxury Products

Photography & Video

Product Design