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.
Modi, Paul Hastings LLP, Washington, DC, for appellee
Newman, Wallach, and Stoll, Circuit Judges.
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
'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).
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