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

No Error in Using Patents and Expert Testimony to Inform Perspective of Skilled Artisan in Written Description Inquiry

Hologic, Inc. v. Smith & Nephew, Inc., 2018 WL 1308888 (Fed. Cir. Mar. 14, 2018) (Newman, Wallach, STOLL) (PTAB) (2 of 5 stars)

Fed Cir affirms IPRx confirmation of patentability. Substantial evidence supported the Board’s determination that S&N’s PCT application had sufficient written description to make it a priority document instead of an invalidating obviousness reference. Per Ariad, 598 F.3d 1336 (Fed. Cir. 2010) (en banc), because the field of minimally invasive surgical devices is a predictable art, a lower level of details is required to satisfy the written description requirement. The opinion discusses how a person of ordinary skill, reviewing the PCT application, would have understood that the inventor was in possession of the necessary inventive features. While the PCT application did not show illumination components, the evidence supported the finding of description as to a “light guide permanently affixed” to the endoscope because included a fiber optics bundle to which a light source could be added. The opinion notes that there was also prior art in the record depicting permanently-attached light guides, and expert testimony to confirm that a person of skill would have understood the PCT application to depict a permanently-attached light guide. It rejects Hologic’s argument that the Board used prior art to supply missing claim elements.

KEYWORDS: INTER PARTES REEXAMINATION; PRIORITY; WRITTEN DESCRIPTION