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

United States Court of Appeals, Federal Circuit

March 14, 2018

HOLOGIC, INC., Appellant
v.
SMITH & NEPHEW, INC., COVIDIEN LP, Appellees

         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.

          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:
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 ...


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