Wednesday, March 14, 2018

Hologic loses appeal at CAFC on Pi Day 2018

The outcome

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.


The issue before the Board—and before us on appeal—is whether Emanuel PCT, which discloses a “connection to a fibre optics bundle which provides for lighting at the end of lens 13,” provides sufficient written description to support the “light guide” “permanently affixed” in the “first channel” of the ’359 patent’s claims. See Emanuel PCT at 4:34–36. If it does, then the ’359 patent properly claims priority based on Emanuel PCT. If it does not, then Emanuel PCT is prior art to the ’359 patent and invalidates it as obvious. The Board, after briefing and review of expert testimony, found that the disclosure in Emanuel PCT provides sufficient written description support for the claimed “light guide,” entitling the ’359 patent to the priority date of Emanuel PCT. Accordingly, the Board reversed the examiner’s rejections of the ’359 patent’s claims.

Of some note, the CAFC brought up extrinsic evidence:

In addition to the intrinsic evidence discussed above, prior patents reflecting the state of the art at the time of the invention and expert testimony regarding that evidence further support the Board’s findings. The ’359 patent on its face lists several pieces of prior art, including U.S. Patent No. 4,606,330 (“Bonnet”) and U.S. Patent No. 4,706,656 (“Kuboto”). Bonnet and Kuboto both describe endoscopes with permanently affixed light guides. S&N’s experts, Dr. Keith B. Isaacson and Mr. Richard J. Apley, each testified that the figures in Emanuel PCT look more like the figures in Bonnet and Kuboto than figures in several prior art patents directed to removable light guides. Specifically, Dr. Isaacson testified that, as of at least September 1998, a person of ordinary skill in the art would have known that there were two types of endoscopic systems generally available for use in surgical procedures: a removable “telescope,” or a unitary integrated device—like Bonnet and Kuboto.


Hologic argues that the Board improperly relied on prior art to supply missing claim elements. We do not agree. The Board simply considered what the specification reasonably conveys to the skilled artisan who has knowledge of the prior art. See Ariad, 598 F.3d at 1351. The Board did not err in this regard.


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