PCT Species Claim Sufficient to Support Priority Claim of Later-filed Genus Claim

PCT Species Claim Sufficient to Support Priority Claim of Later-filed Genus ClaimHologic, Inc. v. Smith & Nephew, Inc., No. 2017-1389, 2018 (Fed. Cir. Mar. 14, 2018 (Before Newman, Wallach, and Stoll, J.) (Opinion for the court, Stoll, J.)

Appellant Hologic, Inc. (“Hologic”) initiated an inter partes reexamination of the patent-in-suit, owned by Smith & Nephew and Covidien (together, “S&N”). The USPTO Patent Trial and Appeal Board (“Board”) found that S&N’s earlier-filed PCT application had sufficient written description to make it a priority document, instead of an intervening reference to prove obviousness. The Court affirmed.

The patent-in-suit relates to an endoscope and method to remove uterine tissue.  The claims at issue recite a method of using an endoscope with a “permanently affixed” “light guide” in one of two channels.

Hologic requested inter partes reexamination of the patent, which the USPTO granted. The Examiner found that S&N’s patent could not claim priority to the earlier-filed PCT application because the PCT did not provide adequate written description for the claims.

The issue was whether the PCT, which disclosed a “connection to fibre optics bundle which provides for lighting” was a sufficient written description to support the “light guide” “permanently affixed” in the “first channel” of the patented claims. The Board reversed the Examiner and concluded that the earlier application had sufficient written description to qualify as a priority document.

Whether and earlier-filed application possesses sufficient written description to qualify as a priority document, or instead is prior art, is a question of fact, which the Federal Circuit reviews for substantial evidence. See 35 U.S.C. § 112, 35 U.S.C. § 120; Yeda Research & Dev. Co. v. Abbott GmbH & Co. KG, 837 F.3d 1341, 1344-45 (Fed. Cir. 2016). Here, the field was a “predictable art” and required less detail to satisfy the written description requirement. Additionally, “substantial evidence” involves “an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art …, [which] must describe an invention understandable to the skilled artisan and show that the inventor actually invented the invention claimed.” Ariad Pharm., Inc. v Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).

Hologic argued that substantial evidence does not support the Board’s conclusion that the PCT inventor had possession of (1) a “light guide;” and (2) a light guide permanently affixed in the “first channel.” One of the figures in the PCT was said to show that the inventor was not in possession of the invention at the relevant time. Relying upon the disclosed “fibre optics bundle,” which the parties agreed is a species of light guide, and that light guides are a “well-known,” the Court concluded that substantial evidence supported the Board’s findings. Further, the Court rebutted Hologic’s third argument by stating that “[t]he written description does not require that every claimed element be illustrated in the figures, particularly in the predictable arts.”

Accordingly, the Federal Circuit affirmed the Board’s finding that the PCT provided written description support for the patent-at-issue, which was entitled to claim priority to the PCT disclosure.

Take Away

The disclosure of a species, here a “fibre optics bundle,” was sufficient support for a priority claim by a later-filed patent application utilizing genus claims, here a “light guide,” because the patent-in-suit was in a predictable art field and the genus claims covered well-known limitations.



The Author

Robert Schaffer

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

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