In Smith & Nephew, Inc. v. Hologic, the Federal Circuit looked at U.S. Patent No. 7,226,459. Smith & Nephew owns the ’459 patent, entitled “Reciprocating Rotary Arthroscopic Surgical Instrument.” The opinion includes an interesting discussion on the construction of claim 1 of the '459 patent.
Claim 1 recites:
A surgical instrument, comprising:
a cutting member including an implement for cutting tissue; and
a drive coupled to the cutting member to simultaneously rotate, translate, and reciprocate the cutting member in response to only a rotational force applied to the drive in a single direction and to cut tissue during simultaneous rotation and translation of the cutting member;
wherein the drive includes a drive member attached 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.
During inter partes reexamination, the Examiner issued ten rejections covering claims 1–16, 19–22, and 25– 33. The Board found all claims at issue unpatentable. Specifically, 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.’” Smith & Nephew unsuccessfully argued that in the context of the ’459 patent, “reciprocation” and “translation” must describe distinct motions and that the Board erred in ignoring this fact.
Instead, the Federal Circuit agreed with the Board's interpretation that “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.” While Smith & Nephew presented an interesting argument, the opinion hinges on an interesting situation in which two terms may be construed to include a partial overlap, which would not necessarily result in redundancy.
Other interesting points of discussion are found in the opinion, but there are several strategic takeaways that may be learned form this case.