884 F.3d 1357 (Fed. Cir. 2018), 2017-1389, Hologic, Inc. v. Smith & Nephew, Inc.

Docket Nº:2017-1389
Citation:884 F.3d 1357
Opinion Judge:Stoll, Circuit Judge.
Party Name:HOLOGIC, INC., Appellant v. SMITH & NEPHEW, INC., Covidien LP, Appellees
Attorney:Matthew Wolf, Arnold & Porter Kaye Scholer LLP, Washington, DC, argued for appellant. Also represented by Marc A. Cohn; Jennifer Sklenar, Los Angeles, CA. Michael A. Albert, Wolf Greenfield & Sacks, PC, Boston, MA, argued for appellees. Appellee Smith & Nephew, Inc. also represented by Richard Gi...
Judge Panel:Before Newman, Wallach, and Stoll, Circuit Judges.
Case Date:March 14, 2018
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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Page 1357

884 F.3d 1357 (Fed. Cir. 2018)

HOLOGIC, INC., Appellant

v.

SMITH & NEPHEW, INC., Covidien LP, Appellees

No. 2017-1389

United States Court of Appeals, Federal Circuit

March 14, 2018

Page 1358

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 95/002,058.

Matthew Wolf, Arnold & Porter Kaye Scholer LLP, Washington, DC, argued for appellant. Also represented by Marc A. Cohn; Jennifer Sklenar, Los Angeles, CA.

Michael A. Albert, Wolf Greenfield & Sacks, PC, Boston, MA, argued for appellees. Appellee Smith & Nephew, Inc. also represented by Richard Giunta.

Naveen Modi, Paul Hastings LLP, Washington, DC, for appellee Covidien LP.

Before Newman, Wallach, and Stoll, Circuit Judges.

OPINION

Stoll, Circuit Judge.

Appellant Hologic, Inc. initiated an inter partes reexamination of U.S. Patent No. 8,061,359, which is owned by Appellees Smith & Nephew, Inc. and Covidien LP (together, " S&N" ). S&N’s ’359 patent claims priority to an earlier-filed PCT application by the same inventor with a nearly identical specification. The U.S. Patent and Trademark Office’s Patent Trial and Appeal Board found that S&N’s earlier-filed PCT application has sufficient written description to make it a priority document instead of an invalidating obviousness reference. Hologic, Inc. v. Smith & Nephew, Inc., No. 2016-006894, 2016 WL 6216657 (P.T.A.B. Oct. 21, 2016) (" Board Decision " ). Hologic appeals. We affirm.

BACKGROUND

The ’359 patent relates to an endoscope and method to remove uterine tissue. Claims 1-3 and 5-7 are at issue in this appeal, and independent claim 1 is representative. Claim 1, partially reproduced below, recites a method of using an endoscope, which includes a " permanently affixed" " light guide" in one of two channels: 1. A method for removal of tissue from a uterus, comprising:

Page 1359

inserting a distal region of an endoscope into said uterus, the endoscope including a valve and an elongated member defining discrete first and second channels extending from a proximal region of the elongated member to the distal region, the second channel having a proximal end in communication with the valve such that fluid from the valve is able to flow into and through the second channel to the uterus, and the first channel having a light guide permanently affixed therein and being sealed from the second channel to prevent fluid from the valve from entering the uterus through the first channel ....

’359 patent, claim 1 (emphasis added).

The figures in the ’359 patent are relevant to understanding the disputed claim term " light guide." Figure 2, reproduced below, shows the full device, including the two claimed channels 5 and 6, one of which must have a light guide permanently fixed inside. According to the specification, viewing channel 6 has a lens 13 and can be connected to a light source 8.

(Image Omitted)

Figure 3, reproduced below, shows a cut-away of Figure 2, including viewing channel 6 and lens 13, and depicts light going from the lens into the viewing channel.

(Image Omitted)

Finally, Figure 1a, reproduced below, illustrates a cross section of the endoscope shaft, including the two channels from Figure 2: viewing channel 6 and main channel 5.

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(Image Omitted)

The ’359 patent specification text and figures are nearly identical to PCT International Publication No. WO 99/11184 (" Emanuel PCT" ), to which the ’359 patent claims priority.1 After entering the national stage with the Emanuel PCT application in a parent application, S&N filed a divisional application that later issued as the ’359 patent. An examiner objected to the application’s drawings for not showing the " light guide" required by then-pending claim 1 (discussed above). After an interview with the examiner, S&N addressed the objection by amending the specification to state: " A connection 8 for a light source is also present, for connection to a light guide, such as a fibre optics bundle which provides for lighting at the end of lens 13." J.A. 486 (amendment underlined), J.A. 493 (Applicant’s Remarks in Amendment). Compare ’359 patent col. 3 ll. 56-58, with Emanuel PCT at 4:34-36. With that amendment, the examiner issued the application as the ’359 patent.

After the359 patent issued, Hologic requested inter partes reexamination of the patent, which the PTO granted. During reexamination, the examiner found that the359 patent could not claim priority to Emanuel PCT because Emanuel PCT did not provide adequate written description for the359 patents claims. Specifically, the examiner reasoned that the disclosure in Emanuel PCT of only a " fibre optics bundle" did not provide adequate written description for the broad genus of " light guides." Thus, the examiner determined that the effective priority date was no earlier than July 20, 2007, and Emanuel PCT, which was published on March 11, 1999, constituted prior art to...

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