Federal Circuit upholds PTAB decision on endoscopic patent
The US Court of Appeals for the Federal Circuit handed a win to medical equipment company Smith & Nephew yesterday in a dispute over an endoscopic patent.
In a precedential ruling, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB) decision to uphold US patent number 8,061,359, finding that an earlier patent application doesn’t count as prior art.
Diagnostics supplier Hologic had initiated an inter partes re-examination of the patent, which relates to an endoscope and a method to remove uterine tissue. The patent is owned by Smith & Nephew and healthcare products company Covidien.
The ‘359 patent claims priority to an earlier-filed Patent Cooperation Treaty (PCT) application by the same inventor with a nearly identical specification.
According to the PTAB, the earlier application has sufficient written description to make it a priority document instead of an invalidating obviousness reference.
Hologic appealed against this finding, challenging the PTAB’s priority date determination and arguing that the Federal Circuit should reinstate an examiner’s obviousness determination (which was reversed by the board).
The issue before the PTAB and subsequently the Federal Circuit was whether the earlier application, which discloses a “connection to a fibre optics bundle which provides for lighting at the end of lens 13”, provides sufficient written description to support the “light guide” “permanently affixed” in the “first channel” of the ’359 patent’s claims.
Circuit Judge Kara Stoll, on behalf of the court, said: “We agree with the board’s finding that the field of this invention is a predictable art, such that a lower level of detail is required to satisfy the written description requirement than for unpredictable arts.”
The court found that the disclosure of the earlier application “reasonably conveys” that the inventor had possession of the claimed subject matter at the earlier filing date.
It also affirmed the PTAB’s reversal of the examiner’s rejection because “substantial evidence” supported the finding of priority.
Hologic put forward a series of arguments against the board’s conclusion, including that the PCT application doesn’t convey that the inventor had possession of a “light guide”, but the Federal Circuit disagreed with all of them.
The Federal Circuit added that prior patents, which reflected the state of the art at the time of the invention, and expert evidence further supported the PTAB’s findings.
“We have reviewed Hologic’s remaining arguments and find them unpersuasive,” said Stoll, affirming the PTAB’s decision.
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