Federal Circuit Summary

Before Newman, Wallach, and Stoll. Appeal from the Patent Trial and Appeal Board.

Summary: Disclosure of a species may provide written description support for a claimed genus when the field of invention is a predictable art.

Hologic requested inter partes reexamination of Smith & Nephew’s patent that claims a method of removing uterine tissue using an endoscope. Hologic argued that the priority PCT application does not provide sufficient written description for the limitation to a “first channel having a light guide permanently affixed therein.” Hologic therefore argued that the priority chain is cut off and that the PCT application acts as invalidating prior art. The examiner agreed, and in rejecting the claims, found the PCT application’s specific disclosure of a “fibre optics bundle” does not support the broad genus of the “light guide” limitation. The Board, however, reversed the examiner’s rejection and Hologic appealed.

The Federal Circuit affirmed the Board’s ruling, holding that substantial evidence supports the Board’s finding that the PCT application provides sufficient written description for the claim terms “light guide,” “first channel,” and “permanently affixed.” The Federal Circuit credited the Board’s determination that the field of the invention is a predictable art and a lower level of detail is required to meet the written description requirement. Regarding “light guide,” the Federal Circuit held that the Board properly relied on undisputed expert testimony that “fibre optic bundles” are a type of light guide and that light guides were well known in the art. Regarding written description support for “first channel” and “permanently affixed,” the Federal Circuit determined the Board properly relied on intrinsic evidence, such as the patent figures, as well as prior art patents that reflect the state of the art at the time of the invention.

This case is: Hologic, Inc., v. Smith & Nephew, Inc.

Written by: Benjamin Anger and Joel L. Broussard

Edited by: Paul Stewart