884 F.3d 1357
Fed. Cir.2018Background
- Hologic requested inter partes reexamination of U.S. Patent No. 8,061,359 (the ’359 patent), owned by Smith & Nephew and Covidien (S&N). The PTO examiner rejected claims 1–3 and 5–7 as obvious based on Emanuel PCT as prior art because Emanuel PCT allegedly lacked written description support for a claimed “light guide.”
- The ’359 patent claims priority to an earlier-filed PCT application (Emanuel PCT) with substantially the same specification and figures; the claimed method requires a first channel with a "light guide permanently affixed therein."
- During prosecution, S&N amended the specification to describe a connection for a light source "for connection to a light guide, such as a fibre optics bundle." The examiner later concluded Emanuel PCT’s mention of a "fibre optics bundle" did not support the broader term "light guide."
- The PTO Board reversed the examiner, finding Emanuel PCT provided sufficient written description to show possession of a permanently affixed light guide in the first channel, thereby giving the ’359 patent Emanuel PCT’s priority date.
- The Board relied on intrinsic evidence (figures and text showing a viewing channel terminating in a lens and viewing tube and a connection for a fibre optics bundle) and expert testimony comparing Emanuel PCT to prior art (Bonnet and Kuboto) that disclosed permanently affixed light guides.
- Hologic appealed the Board’s priority determination; the Federal Circuit reviewed factual findings for substantial evidence and affirmed the Board, holding Emanuel PCT is not invalidating prior art and reversing the examiner’s obviousness rejection.
Issues
| Issue | Hologic's Argument | S&N's Argument | Held |
|---|---|---|---|
| Whether Emanuel PCT provides written description support for a "light guide" | Emanuel: Emanuel PCT only discloses a "fibre optics bundle," not the broader "light guide" term | S&N: A fibre optics bundle is a type of light guide and the art knew other light guides | Court: Affirmed Board — substantial evidence supports that Emanuel PCT conveys possession of a "light guide" |
| Whether Emanuel PCT conveys a light guide "permanently affixed" in the first channel | Emanuel: Figures and text do not show a permanently affixed light guide; Fig. 1a lacks illumination components | S&N: Specification and figures show viewing channel as an integral, non-removable part with an internal fibre optics bundle and connector for light source | Court: Affirmed Board — substantial evidence supports that Emanuel PCT conveys a permanently affixed light guide |
| Whether Board improperly relied on prior art or extrinsic evidence to supply missing elements | Emanuel: Board used prior art to fill gaps in Emanuel PCT, which is improper | S&N: Board used prior-art knowledge only to interpret what the specification reasonably conveys to a skilled artisan | Court: Rejected Hologic’s claim — Board properly evaluated the specification from the perspective of a skilled artisan informed by the state of the art |
| Standard for written description / priority determination | Emanuel: Board required explicit textual disclosure of every claimed term | S&N: Proper test is whether the earlier application reasonably conveys possession to a person of ordinary skill | Court: Affirmed the Ariad-based test and applied it; substantial evidence supports Board’s factual findings |
Key Cases Cited
- Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (sets the written-description/possession standard for patent specifications)
- Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356 (Fed. Cir. 2016) (review standards: obviousness mixed question; factual findings reviewed for substantial evidence)
- Yeda Research & Dev. Co. v. Abbott GmbH & Co. KG, 837 F.3d 1341 (Fed. Cir. 2016) (priority/written-description factual determination reviewed for substantial evidence)
- In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303 (Fed. Cir. 2011) (written description requirement in the priority context)
- In re Hayes Microcomputer Prods., Inc. Patent Litig., 982 F.2d 1527 (Fed. Cir. 1992) (figures can supply written-description support for elements not explicitly depicted when appropriate)