CAFC: “Reciprocate” and “Translate” are not Distinct Motions

In Smith & Nephew, Covidien v. Hologic, (Fed. Cir., 2018) the CAFC interpreted the claim phrase “simultaneously rotate, translate, and reciprocate” such that reciprocating includes a translating motion, but is not necessarily a distinct motion. The CAFC based this interpretation on both the plain and ordinary meaning of the terms “translate” and “reciprocate” and also on the text of the detailed description.

Claim 1 recites:

1. 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.

In an ex parte re-examination, the Board concluded that “translation” is movement from one place to another, and that “reciprocation” is alternating forward and backward movement.  In other words, the broadest reasonable interpretation of “reciprocation” includes translational movement in alternating directions. On appeal to the CAFC, the patent owner argued that the Board’s construction rendered “translate” and “reciprocate” to be superfluous. 

However, the CAFC upheld the interpretation of the Board because the terms are not mutually exclusive and are not redundant of each other.  The CAFC held that this is consistent with the plain meaning of the terms “translate” and “reciprocate.”  Further, there is no clear definition of the disputed term that would deviate from this plain and ordinary meaning.  Instead, the CAFC notes several sections of the specification that describe that the “translating is reciprocating.” 

This case is yet another of many examples in which the CAFC looks to the specification to determine the broadest reasonable interpretation of claim terms.  In a previous post for In Re: Smith International, Inc., the CAFC held that the broadest reasonable interpretation of a claim term must correspond to what and how the inventor describes invention in the specification, which fell in favor of the patent owner in that case where CAFC reversed in examiner’s rejection of the appealed claims from an ex parte re-examination.  In this case, however, the review of the specification resulted in a broad interpretation of the claim term to the detriment of the patent holder because the CAFC did not agree that the specification supported the definition asserted by the patent holder.

Upcoming Webinar

Functional Claiming: Pitfalls and How To’s
October 18, 2018 at 12:00 pm EDT
Recent decisions under 35 U.S.C. §§ 101, 112, and 103 come into focus when viewed through a common lens. During the October webinar, Daniel Hegner of Bejin Bieneman discusses the convergence of federal court and PTAB decisions questioning funct…Register

Subscribe