By: Gene Cherng 

In a rare occurrence, the Federal Circuit overturned an invalidity determination on the basis that one of the references was not in a field of art “analogous” to the art of the patent at issue. Smith & Nephew, Inc. v. Hologic, Inc., No. 2017-1008 (Fed. Cir. January 30, 2018) (nonprecedential).

The patent at issue was directed to a surgical instrument “with a cutting member for semi-rigid tissue” capable of simultaneous rotation, translation, and reciprocation to enable it to cut into semi-rigid tissue without bouncing away. The obviousness rejection was based on a combination of three references – one of which (“Galloway”) was directed at an apparatus with a reciprocating apparatus used in the production and winding of glass fibers.

The PTAB determined that the challenged claims and Galloway both were relevant to solving the technical problem of converting “rotational motion into simultaneous rotational, translational, and reciprocal motions,” and found that a person of ordinary skill in the art would have found Galloway “reasonably pertinent to the technical problem with which the inventor was involved.” Hologic, Inc. v. Smith & Nephew, Inc., No. 2015-007845 (P.T.A.B. Jan. 20, 2016) (citations omitted).

Not so, held the Federal Circuit. Citing to In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992), the Federal Circuit reiterated that “[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.”  The court held that PTAB erred in reducing the problem solved by invention in the challenged claim to a simple mechanical problem:

The inventors 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.’  [In re Clay, 966 F.2d] at 659.

Smith & Nephew, slip. op. at 11.

Unfortunately, the Federal Circuit’s opinion was not all good news for the patentee. Other than the three claims rejected based on Galloway that were reversed, the invalidity determinations as to the remaining nineteen challenged claims were affirmed.  Two of the three claim rejections that were reversed were remanded back to the Board to reconsider the patentability of these “surviving” claims under other rejections.

Notwithstanding the outcome for the patentee, Smith & Nephew provides an analytical framework for litigants to consider in connection with evaluating the value of prior art that is far afield from the art relevant to the patent in suit.  Because whether a reference is analogous art is a question of fact, In re Clay, 966 F.2d at 658, Smith & Nephew also suggests a potential role for expert testimony or other factual evidence to support (or refute) a claim that a particular reference is in an “analogous art.”