NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
SMITH & NEPHEW, INC., COVIDIEN LP,
Appellants
v.
HOLOGIC, INC.,
Appellee
______________________
2017-1008
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 95/001,933.
______________________
Decided: January 30, 2018
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BRADLEY THOMAS LENNIE, Pepper Hamilton LLP,
Washington, DC, argued for appellants. Appellant Smith
& Nephew, Inc. also represented by MAIA H. HARRIS,
Boston, MA.
NAVEEN MODI, Paul Hastings LLP, Washington, DC,
for appellant Covidien LP.
MATTHEW WOLF, Arnold & Porter Kaye Scholer LLP,
Washington, DC, argued for appellee. Also represented
by MARC A. COHN; JENNIFER SKLENAR, Los Angeles, CA.
2 SMITH & NEPHEW, INC. v. HOLOGIC, INC.
______________________
Before NEWMAN, HUGHES, and STOLL, Circuit Judges.
HUGHES, Circuit Judge.
The Patent Trial and Appeal Board affirmed the re-
jection of claims 1–16, 19–22, and 25–33 of U.S. Patent
No. 7,226,459 as anticipated or obvious in light of the
prior art. Because the Board erred in concluding that the
Galloway reference is analogous art but did not err as to
the remaining rejections, we affirm-in-part, reverse-in-
part, and remand.
I
Smith & Nephew owns the ’459 patent, entitled “Re-
ciprocating Rotary Arthroscopic Surgical Instrument.”
J.A. 48. The specification describes a surgical instrument
with a cutting member for cutting semi-rigid tissue. “The
cutting edge of conventional arthroscopic surgical instru-
ments . . . tend to bounce away from [semi-rigid] tissue.”
J.A. 64 at 2:16–19. In this invention, a drive coupled to a
cutting member causes the cutting member to simultane-
ously rotate, translate, and reciprocate. This enables the
surgical instrument to efficiently cut into large volumes of
semi-rigid tissue.
Claim 1 recites:
A surgical instrument, comprising:
a cutting member including an implement for cut-
ting tissue; and
a drive coupled to the cutting member to simulta-
neously rotate, translate, and reciprocate the cut-
ting member in response to only a rotational force
applied to the drive in a single direction and to cut
tissue during simultaneous rotation and transla-
tion of the cutting member;
SMITH & NEPHEW, INC. v. HOLOGIC, INC. 3
wherein the drive includes a drive member at-
tached to the cutting member, the drive member
including a helical groove, and the drive includes
a translation piece disposed in the groove such
that rotary driving of the drive member results in
simultaneous reciprocation of the drive member
relative to the translation piece.
J.A. 66 at 5:56–6:2 (emphasis added).
During inter partes reexamination, the Examiner is-
sued ten rejections covering claims 1–16, 19–22, and 25–
33. The Board found all claims at issue unpatentable, but
did not address Rejections 6–7 and 9 because they covered
claims that had “been rejected in at least one other rejec-
tion discussed and affirmed above.” J.A. 46. Smith &
Nephew appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(A) (2012).
II
We review the Board’s legal conclusions de novo and
its factual findings for substantial evidence. Rambus Inc.
v. Rea,
731 F.3d 1248, 1251 (Fed. Cir. 2013). Obviousness
is a legal question based on underlying factual determina-
tions.
Id. at 1251–52. “[W]e review the Board’s ultimate
claim constructions de novo and its underlying factual
determinations involving extrinsic evidence for substan-
tial evidence.” Microsoft Corp. v. Proxyconn, Inc.,
789
F.3d 1292, 1297 (Fed. Cir. 2015).
A
Smith & Nephew first challenges the Board’s con-
struction of “simultaneously rotate, translate, and recip-
rocate.” The Board relied on this construction to affirm
the Examiner’s rejection of claims 32 and 33 as anticipat-
ed by Middle 1 (Rejection 1). For an unexpired patent, the
1 U.S. Patent No. 5,490,860.
4 SMITH & NEPHEW, INC. v. HOLOGIC, INC.
Board must construe claim terms according to their
broadest reasonable interpretation. Cuozzo Speed Techs.,
LLC v. Lee,
136 S. Ct. 2131, 2144 (2016).
The Board concluded that “[t]ranslation speaks for
movement from one place (e.g., point A) to another (e.g.,
point B)” and “[r]eciprocation means ‘to move forward and
backward alternately.’” J.A. 5. Smith & Nephew
acknowledges that “the ordinary meaning of ‘reciprocate’
includes a translating motion.” Appellant’s Opening Br.
24. Nevertheless, Smith & Nephew argues that in the
context of the ’459 patent, “reciprocation” and “transla-
tion” must describe distinct motions. Therefore, Smith &
Nephew argues that the Board’s construction renders
important claim limitations superfluous.
We disagree. The Board properly applied the plain
meanings of both terms. Although it is true that the
claims require both translation and reciprocation, we do
not find that the Board’s construction renders claim terms
superfluous. The Board reasoned that “these terms are
not mutually exclusive of one another, and are not redun-
dant to each other.” J.A. 26. Rather, “translation occurs
when the cutting member moves in a linear direction
either forward or backward,” and “[t]he cutting member
reciprocates because this forward and backward linear
translation alternates as long as the drive is rotating.”
Id. (emphasis omitted). We find no error in the Board’s
analysis. We also note that the Board’s construction
clarifies that it is the translating motion that reciprocates,
rather than the rotating motion.
Moreover, Smith & Nephew’s proposed construction is
not the broadest reasonable interpretation. Smith &
Nephew requests a construction of “reciprocation” that
“restricts the reciprocation motion to the deceleration and
acceleration phases that occur when the cutting member
is in the act of changing direction.” Appellant’s Opening
Br. 24. “Translation,” in its view, “should be construed as
SMITH & NEPHEW, INC. v. HOLOGIC, INC. 5
a motion separate and distinct from the reciprocation
motion, where the cutting member moves from one point
to another along the longitudinal axis.”
Id. “To act as its
own lexicographer, a patentee must ‘clearly set forth a
definition of the disputed claim term’ other than its plain
and ordinary meaning.” Thorner v. Sony Comput. Entm’t
Am. LLC,
669 F.3d 1362, 1365 (Fed. Cir. 2012) (citations
omitted). The patent does not provide any specialized
definition of the terms that would require a departure
from the plain meaning.
Indeed, the patent specification supports the Board’s
construction, not Smith & Nephew’s. Smith & Nephew
requests limitations that are not found anywhere in the
intrinsic record. The specification does not mention the
acceleration or deceleration phases of the cutting member.
Instead, the specification describes a method of cutting
tissue by “simultaneously rotating and translating the
inner member to cut the tissue,” in which “[t]he translat-
ing is reciprocating.” J.A. 64 at 1:64–2:3. The specifica-
tion discloses another embodiment for cutting tissue in
which the cutting member “undergo[es] simultaneous
rotation and translation. The method may include that
the translation is reciprocation.”
Id. at 2:13–15. The
specification also describes the “simultaneous rotating
and reciprocating inner member of the surgical instru-
ment” as the key to overcoming difficulties with cutting
large volumes of semi-rigid tissue.
Id. at 2:24–27. These
embodiments indicate that translation and reciprocation
are closely related actions, consistent with the Board’s
claim construction. We therefore affirm the Board’s
construction of “simultaneously rotate, translate, and
reciprocate.”
Other than its claim construction argument, Smith &
Nephew does not argue the Board’s anticipation finding is
not supported by substantial evidence. Therefore, we
affirm the determination that Middle anticipates claims
32 and 33.
6 SMITH & NEPHEW, INC. v. HOLOGIC, INC.
B
Smith & Nephew next argues that the Board erred in
determining that claims 1–2, 4–16, 19, 25, and 27–31
would have been obvious. In Rejections 3–4 and 10, the
Examiner rejected these claims as obvious over Middle in
view of Kaplan, 2 Saadat, 3 or Spear. 4
The Board found that Middle discloses most of the
limitations of claims 1–16, 19, and 25–31, but does not
disclose a “drive member including a helical groove.”
Middle instead discloses a cam groove “which bends
towards one end . . . , such as a continuous sine wave.”
J.A. 364 at 2:53–58. Middle explains that the shape of the
cam groove can be modified to vary the number of recipro-
cations per rotation of the drive piston. J.A. 367 at 7:26–
30. The groove depicted in Middle provides more than
one reciprocation per rotation of the piston. Kaplan,
Saadat, and Spear all disclose a helical groove. The
Board found that a person of ordinary skill in the art
would have been motivated to modify Middle’s device to
use the helical groove in Kaplan, Saadat, or Spear, be-
cause this would achieve less than one reciprocation per
rotation.
The Board’s conclusions are supported by substantial
evidence. Smith & Nephew argues there is no motivation
to combine Middle with Kaplan, Saadat, or Spear. Ac-
cording to Smith & Nephew, Middle does not disclose or
suggest less than one reciprocation per rotation, and there
is no reason a skilled artisan would desire to have less
than one reciprocation per rotation. To the contrary,
obviousness does not require the prior art to specifically
disclose less than one reciprocation per rotation. Middle
2 U.S. Patent No. 6,402,701 B1.
3 U.S. Patent No. 5,899,915.
4 U.S. Patent Application Pub. No. 2001/0039963.
SMITH & NEPHEW, INC. v. HOLOGIC, INC. 7
teaches the shape of the cam groove affects the number of
reciprocations per rotation. This supports the Board’s
finding “that such a ratio was one variable that would
have been considered in the normal course of designing
such medical tools.” J.A. 35. The Board also relied on the
testimony from Hologic’s expert, Mr. Walbrink, to con-
clude that using less than one reciprocation per rotation
would have been an obvious design choice at the time of
the invention. J.A. 36–37; see J.A. 1239. Smith & Neph-
ew has not demonstrated that the prior art teaches away
from using less than one reciprocation per rotation. Mr.
Walbrink further testified that modifying Middle to
include a helical groove “would require only routine
engineering from one of skill in the art.” J.A. 1967.
Substantial evidence therefore supports the Board’s
conclusion that “such a substitution would have been a
predictable variation that was within the skill of those in
the art, which would have yielded predictable results, and
thus would have been obvious to one of ordinary skill in
the art.” J.A. 35. Accordingly, we affirm the Board’s
conclusion that claims 1–2, 4–16, 19, 25, and 27–31 would
have been obvious.
C
The Board affirmed Rejection 2, in which the Examin-
er rejected claims 1–14, 19, 25, and 27–31 as obvious over
Kaplan in view of the knowledge of a skilled artisan.
Each of these claims other than claim 3 was also rejected
as obvious in Rejections 3–4 and 10, discussed above.
Claim 3 and the claims from which it depends require
simultaneous rotation, translation, and reciprocation of
the cutting member, and the use of a helical groove on a
drive member to impart reciprocation in response to a
rotating drive member.
Figures 10 and 24 of Kaplan disclose a needle biopsy
instrument that is configured for the needle to simultane-
ously rotate and reciprocate. J.A. 397 at 14:13–16; J.A.
8 SMITH & NEPHEW, INC. v. HOLOGIC, INC.
398 at 15:65–16:3. The embodiments in Figures 10 and
24 do not use a helical groove to produce reciprocation.
Figure 8 of Kaplan discloses using a helical groove to
produce a translating, reciprocating motion, but in this
embodiment a sleeve restrains the needle from also
rotating. J.A. 377; J.A. 397 at 13:51–67. The Board found
it would have been obvious to “substitut[e] the groove
shown in Figure 10 of Kaplan for achieving reciprocation
and translation from rotation with the helical groove
shown in Figure 8 to achieve the same, predictable re-
sult.” J.A. 44.
Smith & Nephew argues that the Board erred in fail-
ing to explain “why a skilled artisan would choose to
specifically modify Kaplan’s disclosure by combining
Figure 8 with Figures 10 or 24 in a manner that includes
a helical groove but also allows for simultaneous rotation,
translation, and reciprocation of the biopsy needle.”
Appellant’s Opening Br. 67 (emphasis omitted). We
disagree. The Board’s decision cited the Examiner’s
finding that helical grooves, such as those shown in
Kaplan Figure 8 and ’459 patent Figure 3A, were well
known in the art, and would provide an alternative mech-
anism for achieving the same reciprocation and transla-
tion as Kaplan’s Figures 10 or 24 with predictable results.
Because the Kaplan patent itself supports the Examiner’s
findings, we agree that a person of ordinary skill would
have been motivated to implement this “predictable
variation.” See KSR Int’l Co. v. Teleflex Inc.,
550 U.S.
398, 417 (2007). Thus, we affirm the Board’s conclusion
that claims 1–14, 19, 25, and 27–31 would have been
obvious at the time of the invention.
D
Finally, we turn to Rejections 5 and 8, in which the
Board affirmed the rejection of claims 1–2, 4–14, 19–22,
25, and 27–31 as obvious based on the combinations of
SMITH & NEPHEW, INC. v. HOLOGIC, INC. 9
Galloway with Middle and Kaplan. Smith & Nephew
argues that Galloway is not analogous art. We agree.
Galloway is titled, “Reciprocating Apparatus and Cam
Follower for Winding a Package.” J.A. 878. “This inven-
tion relates to the production of glass fibers, and in par-
ticular, to winding a glass fiber strand to form packages.”
Id. at 1:21–23. Galloway discloses a reciprocating appa-
ratus with a helical groove.
Id. at 2:19–21. The Board
found that Galloway was relevant to solving the technical
problem of converting rotational motion into simultaneous
rotational, translational, and reciprocal motions. J.A. 40.
Because Middle teaches that the shape of the cam groove
can be modified to vary the number of reciprocations per
rotation of the drive piston, the Board found that a person
of skill in the art would seek out teachings regarding
relevant cam grooves.
Id. at 40–41.
To determine if a prior art reference is analogous, we
consider “(1) whether the art is from the same field of
endeavor, regardless of the problem addressed, and (2) if
the reference is not within the field of the inventor's
endeavor, whether the reference still is reasonably perti-
nent to the particular problem with which the inventor is
involved.” In re Clay,
966 F.2d 656, 658 (Fed. Cir. 1992).
“A reference is reasonably pertinent if, even though it
may be in a different field from that of the inventor’s
endeavor, it is one which, because of the matter with
which it deals, logically would have commended itself to
an inventor’s attention in considering his problem.”
Id. at
659.
The facts of In re Clay are illustrative. In that case,
both the patented invention and the prior art reference
related to the petroleum industry, and both taught using
a gel.
Id. at 657–58. We found that they were not di-
rected to the same field of endeavor because the two
inventions were used in very different environments (one,
the extraction of crude petroleum, and the other, the
10 SMITH & NEPHEW, INC. v. HOLOGIC, INC.
storage of refined liquid hydrocarbons).
Id. at 659–60.
We also found that the reference was not reasonably
pertinent to the problem the inventor was trying to solve,
because they explicitly were intended to solve different
problems.
In this case, the Board erred by too narrowly constru-
ing the problem addressed by the ’459 patent. The inven-
tors of the ’459 patent focused on solving the difficulty in
cutting large amounts of semi-rigid tissue. Galloway, in
contrast, is directed to winding glass fiber. Even though
both ended up with similar mechanical solutions, it is
beyond a stretch to say that Galloway “logically would
have commended itself to an inventor’s attention in
considering his problem.”
Id. at 659. Because Galloway
is not analogous prior art, the Board erred by affirming
Rejections 5 and 8.
Most of the claims covered by Rejections 5 and 8 were
also subject to other rejections. As noted above, substan-
tial evidence supports the Board’s conclusion that claims
1–2, 4–14, 19, and 27–31 would have been obvious. As far
as this appeal is concerned, the Board relied only on the
Galloway reference to conclude that claims 20–22 would
have been obvious. The Board did not, however, consider
Rejections 6 or 9, in which the Examiner determined that
claims 21 and 22 would have been obvious in light of the
combination of Middle and Spear or Kaplan and Spear.
Therefore, we reverse the Board’s conclusion that claim
20 would have been obvious, and remand for the Board to
consider claims 21 and 22 under Rejections 6 and 9.
III
Because substantial evidence does not support the
Board’s conclusion that Galloway is analogous art, we
reverse the Board’s conclusion that claim 20 would have
been obvious and remand for the Board to reconsider the
Examiner’s rejections of claims 21 and 22 under different
SMITH & NEPHEW, INC. v. HOLOGIC, INC. 11
combinations. We affirm the Board’s affirmance of the
Examiner’s rejection of claims 1–16, 19, and 25–33.
AFFIRMED-IN-PART, REVERSED-IN PART, AND
REMANDED
No costs.
