Hologic, Inc. v. SenoRx, Inc.
639 F.3d 1329
| Fed. Cir. | 2011Background
- Hologic sued SenoRx alleging infringement of the '142 patent related to balloon brachytherapy devices.
- The district court construed claim 1 to require asymmetry about the longitudinal axis; found claim 1 anticipated by Ashpole and denied summary judgment as to claim 8.
- The district court held claim 1 invalid for anticipation; the jury later found claim 8 anticipated and obvious.
- Hologic appealed, challenging the claim construction and the validity determinations.
- The Federal Circuit reversed the invalidity ruling, remanding for proceedings consistent with their construction and holding that the district court erred in its interpretation of asymmetry.
- Costs were awarded to Hologic.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Proper construction of 'asymmetrically located and arranged within the expandable surface' | Hologic contends asymmetry is about the longitudinal axis. | SenoRx argues no axis limitation; constructions should rely on the specification. | Claim 1 construed to asymmetry about the longitudinal axis; not limited to other interpretations. |
| Relation between claim 1 and claim 6 (claim differentiation) | Different terms justify different scope; claim 1 may be broader. | Claim 6 explicitly ties symmetry to a longitudinal axis; differentiation supports distinct readings. | No basis to rewrite claim 1 beyond its plain language; differences with claim 6 do not alter claim 1’s asymmetry understanding. |
| Anticipation/inoperability under prior art (Ashpole/Williams) | Ashpole discloses predetermined asymmetric isodose curves. | Ashpole does not disclose axis-relative asymmetry; Williams is not clearly anticipatory. | Ashpole does not render claim 1 invalid under the construed meaning; Williams not controlling. |
| Enablement/operability of the phrase 'disposed completely within the expandable outer surface and spaced apart from the apparatus volume' | The phrasing is feasible under the specification; no fatal lack of enablement. | The language is awkward and could render the claim inoperable. | Court agrees with district court that the wording is consistent with the specification and does not render the claim invalid. |
Key Cases Cited
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (claims are read in light of the specification and prosecution history)
- Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) (intrinsic evidence governs claim construction)
- Iovate Health Scis., Inc. v. Bio-Engineered Supplements & Nutrition, Inc., 586 F.3d 1376 (Fed. Cir. 2009) (summary judgment de novo; standard for claim construction and validity)
- Cybor Corp. v. FAS Techs., 138 F.3d 1448 (Fed. Cir. 1998) (law reviewing claim construction de novo (en banc))