Federal Circuit holds that PTAB erred in too narrowly construing the problem addressed in Smith & Nephew’s surgical patent

January 31, 2018—Smith & Nephew (“Smith”) own U.S. Patent No. 7,226,459, entitled “Reciprocating Rotary Arthroscopic Surgical Instrument.” The patent pertains to a surgical instrument used to cut semi-rigid human tissue that simultaneously “rotates, translates and reciprocates,” thereby solving the problem with existing tools, which tended to “bounce away” from such tissue. Hologic, Inc. challenged the ‘459 patent, and the PTAB affirmed the rejection of claims 1-16, 19-22, and 25-33 as anticipated or obvious in light of the prior art. The Federal Circuit affirmed the PTAB’s rejection with respect to 23 claims, but reversed and remanded the PTAB’s rejection of claims 20-22. The PTAB had found those claims invalid in light of an earlier invention, entitled “Reciprocating Apparatus and Cam Follower for Winding a Package,” that covered a device used in making woven products or plastics that winds glass fiber strands with a reciprocating motion, a movement similar to that claimed by the ‘459 patent. The Federal Circuit cited In re Clay (1992) in stating that a prior art reference can only be used to a find a patent invalid if it is analogous, meaning it must be from the same field of endeavor, or be “reasonably pertinent” to the problem the patent is meant to solve. The Federal Circuit found that although the reference cited used a similar mechanical solution, it was not reasonably pertinent to the problem addressed by the ‘459 patent, and that the Board had too narrowly construed said problem in making their determination.

The case is captioned Smith & Nephew, Inc., Covidien LP, v. Hologic, Inc., 2017-1008, in the U.S. Court of Appeals for the Federal Circuit. It is an appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board, in No. 95/001,933.

By Laya Varanasi