Hologic, Inc. v. Smith & Nephew, Inc., Covidien LP

Docket No. 2017-1389

March 14, 2018

Brief summary: PTAB conclusion that S&N’s PCT application (“Emanuel PCT”) was not an invalidating obviousness reference against a related patent but instead “has sufficient written description to make it a priority document” affirmed.

Summary: Hologic appealed PTAB conclusion during inter partes reexamination that S&N’s PCT application (“Emanuel PCT”) to which the challenged patent (US 8,061,359 relating to “method[s] for removal of tissue from a uterus”) was not an invalidating obviousness reference but instead “has sufficient written description to make it a priority document”. The specification text and figures of the ‘359 patent “are nearly identical to” the Emanuel PCT, and was filed as a divisional application from the original national stage application of the Emanuel PCT. During prosecution of the ‘359 patent, the “examiner objected to the application’s drawings for not showing the [claimed] ‘light guide’” (“‘permanently affixed’ in the ‘first channel’”) and S&N addressed the objection by amending the specification to modify “for connection to a fibre optics bundle” to “for connection to a light guide, such as a fibre optics bundle”. The examiner then allowed the claims. During reexamination, the examiner found Emanuel PCT “did not provide adequate written description for the broad genus of ‘light guides’” and instead, therefore, was prior art to the ‘359 claims. The Board disagreed with the examiner and reversed those rejections. The FC panel explained that “[o]bviousness…is a mixed question of law and fact”, and “[t]he Board’s ultimate obviousness determination” is reviewed de novo and its “underlying fact-findings for substantial evidence” (Harmonic, FC 2016; Yeda, FC 2016 (“[w]hether an earlier-filed application possesses sufficient written description to qualify it as a priority document”); “35 USC 112, para. 1; In re Katz, FC 2011; Ariad, FC 2010 (“the specification must describe an invention understandable to [the] skilled artisan and show that the inventor actually invented the invention claimed”)). The FC panel “agree[d] with the Board’s finding that the field of the invention is a predictable art, such that a lower level of detail is required to satisfy the written description requirement than for unpredictable arts” (Ariad, FC 2010). The FC panel found the Board’s findings to be supported by substantial evidence (e.g., Emanuel PCT “reasonably conveys…inventor had possession of a ‘light guide’” and “the viewing channel is element 6 in Figure 2” (the “first channel”) (In re Hayes, FC 1992 (“a ‘microprocessor’ illustrated in a figure was sufficient written description support for claiming timing means and other elements not depicted in figures”); “‘permanently affixed’ light guide” since “[a]t no point does the specification describe the fibre optics bundle component of the viewing/receiving part 3 as removable”; and “prior patents reflecting the state of the art at the time of the invention and expert testimony”). The FC panel disagreed with Hologic’s argument that “the Board did not properly limit its consideration to the four corners of Emanuel PCT because” it “does not expressly or ‘necessarily include a light guide permanently affixed in a first channel”, citing Ariad (“reasonably conveys…that the inventor had possession of the claimed subject matter”). Thus, the Board’s decision was affirmed.

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