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

Smith & Nephew’s patent relates to an endoscope and method to remove uterine tissue; it claims priority to an earlier-filed PCT application by the same inventor with a nearly identical specification. On inter partes review, the Patent Trial and Appeal Board found that S&N’s earlier-filed PCT application has sufficient written description to make it a priority document instead of an invalidating obviousness reference. The Federal Circuit affirmed. Substantial evidence supported the finding that the PCT application reasonably conveys to a person of ordinary skill that the inventor had possession of the “first channel having a light guide permanently affixed therein.” The court also upheld the Board’s definition of a person of ordinary skill in the art as a “degreed engineer having at least 5 years of experience designing and developing devices used in minimally invasive surgery (endoscopes, resectoscopes, shavers, tissue removal devices, etc.).” View "Hologic, Inc. v. Smith & Nephew, Inc." on Justia Law