United States Court of Appeals
for the Federal Circuit
__________________________
HOLOGIC, INC., CYTYC CORPORATION,
AND HOLOGIC L.P.,
Plaintiffs-Appellants,
v.
SENORX, INC.,
Defendant-Appellee.
__________________________
2010-1235
__________________________
Appeal from the United States District Court for the
Northern District of California in Case No. 08-CV-0133,
Senior Judge Ronald M. Whyte.
____________________________
Decided: February 24, 2011
____________________________
MATTHEW M. WOLF, Howrey, LLP, of Washington, DC,
argued for the plaintiffs-appellants. With him on the
brief was JOHN E. NILSSON.
KANNON K. SHANMUGAM, Williams & Connolly, LLP,
of Washington, DC, argued for the defendant-appellee.
With him on the brief were BRUCE R. GENDERSON, AARON
P. MAURER and ADAM D. HARBER.
__________________________
HOLOGIC v. SENORX 2
Before NEWMAN, FRIEDMAN, and LOURIE, Circuit Judges.
Opinion for the court filed by Circuit Judge LOURIE.
Opinion dubitante filed by Circuit Judge FRIEDMAN.
LOURIE, Circuit Judge.
Hologic, Inc., Cytyc Corp., and Hologic L.P. (collec-
tively “Hologic”) appeal from the decision of the United
States District Court for the Northern District of Califor-
nia granting summary judgment of invalidity of claim 1 of
U.S. Patent 6,482,142 (the “’142 patent”), Hologic, Inc. v.
SenoRx, Inc., 08-CV-0133 (N.D. Cal. Oct. 30, 2009) (“Sum-
mary Judgment Op.”), and from the judgment following a
jury verdict of invalidity of claim 8 of the ’142 patent that
was based on the court’s ruling regarding claim 1,
Hologic, Inc. v. SenoRx, Inc., 08-CV-0133 (N.D. Cal. Feb.
24, 2010). Because the district court’s invalidity finding
was based on an erroneous claim construction, we reverse
and remand.
BACKGROUND
I.
The relevant technology relates to balloon brachy-
therapy, a type of radiation therapy in which a balloon is
inserted into the body at or near a tumor or other prolif-
erative tissue disease site. Leading up to the balloon and
running through it is a lumen, through which a radiation
source may be placed in the balloon. Early uses of balloon
brachytherapy included treatment of bladder cancer. In
such applications, the devices were placed within existing
body cavities. Balloon brachytherapy may also be used
after the removal of a tumor by inserting the device into
the cavity that remains from tumor removal to target any
remaining cancerous tissue while minimizing damage to
healthy tissue. This usage is contemplated by the ’142
3 HOLOGIC v. SENORX
patent and its parent patents, and is used in the accused
device, as discussed further below.
The ’142 patent is a continuation-in-part of U.S. Pat-
ent 6,413,204 (the “’204 patent”), which is in turn a con-
tinuation-in-part of U.S. Patent 5,913,813 (the “’813
patent”). 1 Those patents explain that benefits of balloon
brachytherapy include the ability to avoid exposing tissue
immediately surrounding a radiation source from overly
intense radiation and the delivery of more uniform radia-
tion, both of which are achieved by virtue of spacing the
source away from the target tissue, within the balloon.
‘813 patent col.3 ll.14-38. The ’142 patent discloses a
balloon brachytherapy device with a “means for providing
predetermined asymmetric isodose profile [sic.] within the
target tissue.” ’142 patent col.2 ll.62-64. Various em-
bodiments are described for obtaining this result, includ-
ing placing an inner balloon filled with a liquid radiation
source within the larger balloon, id. col.3 ll.1-6, arranging
various solid radiation sources within the balloon, id. col 3
ll.7-19, and the use of radiation shielding material within
the balloon, id. col.3 ll.20-36. Isodose curves are shown in
figures depicting the radiation devices; these curves
illustrate the points at which a given amount of radiation
is received. Figure 1 of the ’142 patent is illustrative of a
relevant embodiment of the claimed invention, showing a
tube (12) proceeding along a longitudinal axis (38)
through a balloon (32), and radiation sources (36) placed
along a curved wire (34), also within the balloon, that
create asymmetric isodose curves (e.g., 40). Id. col.4 ll.27-
59.
1 All three patents were asserted in the district
court. However, Hologic did not appeal the jury’s finding
that claim 4 of the ‘204 patent was invalid and did not
assert the ‘813 patent at trial. Thus, they are not before
us on appeal.
HOLOGIC v. SENORX 4
This appeal involves claims 1 and 8 of the ’142 patent.
Independent claim 1 reads as follows:
An interstitial brachytherapy apparatus for treat-
ing target tissue surrounding a surgical extraction
comprising: an expandable outer surface defining
a three-dimensional apparatus volume configured
to fill an interstitial void created by the surgical
extraction of diseased tissue and define an inner
boundary of the target tissue being treated; a ra-
diation source disposed completely within the ex-
pandable outer surface and located so as to be
spaced apart from the apparatus volume, the ra-
diation source further being asymmetrically lo-
cated and arranged within the expandable surface
to provide predetermined asymmetric isodose
curves with respect to the apparatus volume.
Id. col.8 l.61–col.9 l.6 (emphases added). Claim 6, which
the district court found relevant to its claim construction,
reads:
A surgical apparatus for providing radiation
treatment to target tissue comprising: an expand-
able outer surface defining an apparatus volume;
5 HOLOGIC v. SENORX
a radiation source replaceably disposable within
the expandable outer surface, the radiation source
comprising a plurality of solid radiation sources
arranged to provide predetermined asymmetric
isodose curves within the target tissue, the plural-
ity of radiation sources being provided on at least
two elongate members extending into the appara-
tus volume, at least one of the elongate members
being shaped to provide asymmetric placement of a
radiation source with respect to a longitudinal axis
through the apparatus volume.
Id. col.9 l.45–col.10 l.9 (emphasis added). Claim 8, which
depends from claim 1, reads:
The apparatus of claim 1, wherein the expandable
outer surface is sufficiently rigid to deform the
target tissue into the shape of the expandable
outer surface, causing the predetermined asym-
metric isodose curves to penetrate into the target
tissue to a prescribed depth.
Id. col.10 ll.13-17 (emphasis added).
Prior art in the field is also relevant to the appeal. A
1990 article described the use of endotracheal tubes to
deliver radiation following the removal of brain tumors.
R.D. Ashpole et al., A New Technique of Brachytherapy for
Malignant Gliomas with Caesium-137: A New Method for
Utilizing a Remote Afterloading System, 2 Clinical Oncol-
ogy 333, 333-37 (1990) (“Ashpole”). Ashpole describes a
method of delivering radiation to cancer cells remaining
in surrounding tissue after tumor removal. Ashpole at
334. The Ashpole device is described as having a balloon
at one end of a catheter which allows for a “source train”
of radioactive beads to be introduced into the balloon.
The article explains that “[a] certain measure of dosimet-
rical versatility is possible in that positions of the active
HOLOGIC v. SENORX 6
beads can be changed to produce an isodose distribution
specific to the geometry of the individual tumour beds.”
Id. at 336. There is no disclosure of positioning the beads
away from the longitudinal axis of the balloon, because
they are introduced by way of the catheter that defines
that axis. However, Ashpole appears to contemplate
isodose curves that are non-concentric with the balloon by
movement of the source train along the longitudinal axis.
Summary Judgment Op. at 13-14 (summarizing Ashpole
reference and parties’ agreement on its disclosure regard-
ing isodose curves).
The prior art also includes a European patent applica-
tion, WO 98/15315 (“Williams”), drawn to devices for
treatment of proliferative disorders by using a small
balloon of a liquid radiation source within a larger bal-
loon. The application focuses on providing the radiation
material to the inner balloon and the shape of the balloon.
Figure 3 of that reference is reproduced below:
7 HOLOGIC v. SENORX
II.
Hologic brought suit against SenoRx, Inc. (“SenoRx”)
in January 2008, alleging that SenoRx’s balloon brachy-
therapy device, the Contura Multi-Lumen Balloon (“Con-
tura”) infringes its patents. SenoRx conceded
infringement of claims 1 and 8 of the ’142 patent, see
Summary Judgment Op. at 28, but argued that the as-
serted claims were invalid. The court held a hearing and
issued its claim construction order in February 2009.
Hologic, Inc. v. SenoRx, Inc., 2009 WL 416571 (N.D. Cal.
2009) (“Markman Op.”). The court construed the lan-
guage in claim 1, “the radiation source further being
asymmetrically located and arranged within the expand-
able surface to provide predetermined asymmetric isodose
curves with respect to the apparatus volume,” to require
that the radiation source be “located and arranged inside
the expandable surface so as not to be concentric with the
expandable outer surface,” and did not limit the claimed
asymmetry to asymmetry about the longitudinal axis. Id.
at *17. The court similarly construed “predetermined
asymmetric isodose curves” in both claims to mean
“isodose curves determined before radiation is adminis-
tered which are not substantially the same shape as the
apparatus volume and/or not concentric with the appara-
tus volume.” Id. The court thus rejected Hologic’s pro-
posed claim construction of “predetermined isodose curves
that are not symmetric with respect to the longitudinal
axis of the apparatus volume.” In rejecting Hologic’s
construction, the court stated that “although the specifica-
tion and claims frequently refer to asymmetry with re-
spect to the longitudinal axis, they do not always do so.”
Id. at *11. The court also found persuasive the fact that
claim 6 of the ’142 patent includes a requirement that the
asymmetry be longitudinal, in contrast to the asserted
claims, which do not contain that term. Id.
HOLOGIC v. SENORX 8
The district court denied a motion for summary judg-
ment of invalidity of claim 1 of the ’142 patent based on
inoperability. Hologic, Inc. v. SenoRx, Inc., 2009 WL
416596 (N.D. Cal. 2009). The court found that the lan-
guage of claim 1 requiring a radiation source disposed
completely within the expandable outer surface but also
spaced apart from the apparatus volume did not render
the claim inoperable and not enabled, although its initial
reaction was “that the inventors made an obvious mistake
in the drafting of Claim 1.” Id. at *2. The court noted
that the apparent, intended meaning of the claim was
that the source was located within the balloon but spaced
apart from its surface. The court further noted that in
correspondence with the PTO during prosecution history,
the applicants stated:
For example, the expandable outer surface of
claims 1 and 9 defines a three-dimensional appa-
ratus volume configured to fill an interstitial void
created by the surgical extraction of diseased tis-
sue and define an inner boundary of the target
tissue being treated.... Furthermore, the radiation
source is disposed completely within the expand-
able surface and is spaced apart from the appara-
tus volume.... That is, the radiation source is
arranged within the device so that the asymmetric
dosing appears at the apparatus volume, which is
configured to correspond to the interstitial void
created by surgical extraction of diseased tissue.
Id. at *3. Thus, the language used to describe the inven-
tion in correspondence with the examiner was identical to
the later used claim language, and clearly envisioned a
source located within the balloon but spaced apart from
its surface. The court concluded that although “apparatus
volume” was “an odd choice of language to describe what
the inventor intended to describe, its use was consistent
9 HOLOGIC v. SENORX
in the claim, in accordance with use in the prosecution
history, and it results in coverage of the embodiments
disclosed.” Id. at *4.
Based on its constructions, the district court then
granted summary judgment of invalidity of claim 1 of the
’142 patent, as anticipated by the prior art Ashpole arti-
cle. Summary Judgment Op. In so doing, the court found
that Ashpole disclosed predetermined, asymmetric
isodose curves like those in claim 1 of the ’142 patent. Id.
at 13-14. However, the court found that Ashpole did not
clearly and convincingly disclose claim 8’s requirement
that the expandable outer surface be sufficiently rigid to
deform the target tissue into the shape of the expandable
outer surface, and therefore denied summary judgment as
to anticipation of that claim. Id. at 14. At trial, Hologic
asserted dependent claim 8 of the ’142 patent. The court
instructed the jury that the “asymmetrically located and
arranged” limitation and the “predetermined asymmetric
isodose curve” limitation of claim 1 had been found in the
prior art. J.A. 6561-62. The jury then found that the
Ashpole reference alone rendered claim 8 anticipated, and
Williams, inter alia, rendered claim 8 obvious in light of
Ashpole and the court entered judgment in favor of
SenoRx. Hologic, Inc. v. SenoRx, Inc., 08-CV-0133 (N.D.
Cal. Feb. 24, 2010).
Hologic appealed. We have jurisdiction pursuant to
28 U.S.C. § 1295(a)(1).
DISCUSSION
We review a district court’s decision on summary
judgment de novo, reapplying the same standard applied
by the district court. Iovate Health Scis., Inc. v. Bio-
Engineered Supplements & Nutrition, Inc., 586 F.3d 1376,
1380 (Fed. Cir. 2009). Summary judgment is appropriate
“if the movant shows that there is no genuine dispute as
HOLOGIC v. SENORX 10
to any material fact and the movant is entitled to judg-
ment as a matter of law.” Fed. R. Civ. P. 56(a). Claim
construction is an issue of law, which we review de novo.
See, e.g., Cyber Corp. v. FAS Techs., 138 F.3d 1448, 1456
(Fed. Cir. 1998) (en banc). A patent is presumed valid, 35
U.S.C. § 282, and this presumption can be overcome only
by clear and convincing evidence to the contrary. Bristol-
Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368,
1374 (Fed. Cir. 2001).
Hologic argues that the district court erred by failing
to limit claim 1 to situations in which asymmetry is
achieved by displacing the radiation source from the
longitudinal axis. According to Hologic, because the claim
language does not resolve the nature of the asymmetry,
the court must look to the ’142 patent’s specification,
which shows that radiation is always asymmetrically
located with respect to the longitudinal axis. Hologic then
argues that requiring the isodose curves to be non-
concentric with respect to the balloon would read out the
preferred embodiment and many other embodiments from
the specification. The specification, argues Hologic,
consistently characterizes asymmetry relative only to the
longitudinal axis. Hologic also points to statements made
during prosecution history as helpful in construction. In
overcoming an obviousness rejection in view of U.S.
Patent 6,036,631 (“McGrath”), Hologic explained that
what issued as claim 1 could be distinguished from
McGrath in part because “McGrath provides an x-ray tube
[] that slides within a catheter . . . ‘essentially forming a
linear source,’” J.A. 10185, rather than providing an
asymmetric dose.
Hologic also challenged the district court’s construc-
tion for differentiating between independent claim 1 and
independent claim 6, which claims a lumen “shaped to
provide asymmetric placement of a radiation source with
11 HOLOGIC v. SENORX
respect to a longitudinal axis through the apparatus
volume.” ’142 patent col.10 ll.6-9. Hologic argues that
claim differentiation is only proper between an independ-
ent claim and those claims that depend from it. Hologic
explains that, in contrast to claim 6, claim 1 was not
specifically drawn to the embodiments with multiple
radiation sources, thus obviating the need to explain that
at least one of the lumens was shaped so as to be asym-
metric with the longitudinal axis. Hologic responds to
SenoRx’s suggestion that Hologic’s construction was
inconsistent with the embodiments shown in figures 3
and 3A by arguing that those figures are also drawn to an
embodiment with multiple radiation sources, and thus are
not implicated by claim 1. Hologic further argues that the
isodose curves produced by those configurations are
asymmetric about the longitudinal axis.
SenoRx argues that the claim language is clear that
the contemplated asymmetry is with respect to the bal-
loon’s volume and that there is no reason to import limita-
tions from the specification. SenoRx further argues that
an asymmetric dose is one that is not substantially uni-
form in substantially every direction, and that it follows
from this construction that the patent discloses radiation
sources offset from the center of the balloon. In any case,
argues SenoRx, the specification supports the district
court’s construction by giving an example that does not
specify an axis with respect to which the radiation source
is asymmetrically placed, both in the text, which describes
an example without using the phrase “longitudinal axis,”
’142 patent col.3 ll.8-10, and in figures 3 and 3A. Those
figures, according to SenoRx, show placement of radiation
sources that form asymmetric isodose curves with respect
to the apparatus volume, as described in claim 1, but are
not asymmetrically located with respect to the longitudi-
nal axis. In addition, SenoRx argues that the district
HOLOGIC v. SENORX 12
court properly looked to other claims in finding that claim
1 could have, but did not, refer to asymmetry with respect
to the longitudinal axis. SenoRx further argues that the
prosecution history is not informative and the statements
relied upon by Hologic do not distinguish McGrath on the
basis of longitudinal asymmetry.
SenoRx also argues that even under Hologic’s pro-
posed claim construction, claim 1 is invalid as anticipated
in light of Williams, which includes a figure that SenoRx
contends is asymmetric with respect to the longitudinal
axis of the outer balloon. In addition, SenoRx revives its
argument that claim 1 is invalid as inoperable and not
enabled. Specifically, SenoRx argues that the require-
ment of “a radiation source disposed completely within
the expandable outer surface and located so as to be
spaced apart from the apparatus volume” is impossible
because the radiation source cannot be inside the volume
and spaced apart from it.
We agree with Hologic that the phrase “asymmetri-
cally located and arranged within the expandable surface”
means “located and arranged so as not to be on the longi-
tudinal axis of the expandable surface.” Although the
claim concludes with the phrase “with respect to the
apparatus volume,” ’142 patent col.9 l.6, that language
explains the asymmetry of the predetermined isodose
curves, as discussed further, below. The asymmetry of
the location of the radiation sources is not explicitly
stated in claim 1. However, asymmetry is a relative
concept that can only exist in relation to some reference.
Although “the claims of a patent define the invention to
which the patentee is entitled the right to exclude,” we
must read the claims “in view of the specification, of
which they are a part.” Phillips v. AWH Corp., 415 F.3d
1303, 1312-14 (Fed. Cir. 2005) (en banc) (quotations
omitted); Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
13 HOLOGIC v. SENORX
1576, 1582 (Fed. Cir. 1996) (“[I]n interpreting an asserted
claim, the court should look first to the intrinsic evidence
of record, i.e., the patent itself, including the claims, the
specification and, if in evidence, the prosecution history.”).
Here, claim 1 does not specify a reference for the asymme-
try of the radiation source’s placement within the ex-
pandable surface; however, the specification makes clear
what the inventors contemplated as their invention. All
the descriptions of the invention contemplating the
placement of a radiation source describe displacement
from the longitudinal axis of the balloon. For example,
the summary of the invention describes the configurations
contemplated by the inventors:
In one configuration, asymmetric isodose curves
are created . . . by . . . locating the radiation source
so as to be asymmetrically placed with respect to a
longitudinal axis of the apparatus. In one exam-
ple . . . an inner volume containing a liquid radio-
isotope is asymmetrically placed within the
apparatus volume so as to result in an isodose pro-
file in the target tissue that is asymmetric about
the longitudinal axis of the apparatus.
’142 patent col.2 l.65-col.3 l.6 (emphases added).
This description explains how the radiation source
may be asymmetrically placed in relation to the longitu-
dinal axis of the device, and how such placement will
create isodose curves that are also asymmetric with
respect to the longitudinal axis. One particular sentence
was relied upon by the district court because it does not
specify asymmetry about the longitudinal axis—in fact, it
does not specify any reference in describing its asymme-
try. Id. col.3 ll.7-10 (“In another example, the radiation
source comprises a plurality of spaced apart solid radioac-
tive particles disposed within the apparatus volume and
HOLOGIC v. SENORX 14
arranged to provide a predetermined asymmetric isodose
curve within the target tissue.”). However, the sentence
is followed directly and in the same paragraph by two
“particular examples,” both of which specifically dictate
asymmetry of the location of radiation about the longitu-
dinal axis:
In one particular example, the plurality of spaced
apart radioactive particles are provided on a sin-
gle elongate member that is shaped so that some
of the radioactive particles are farther from the
longitudinal axis of the apparatus than others. In
other particular examples, a plurality of members
carrying radioactive particles are provided with at
least one of the members being shaped so as to
place at least one radioactive particle asymmetri-
cally with respect to the longitudinal axis of the
apparatus.
Id. col.3 ll.11-19 (emphases added).
It thus appears that the first sentence of the para-
graph is not a deviation from the rest of the specification,
which contemplates different ways of arranging radiation
sources asymmetrically about the longitudinal axis and of
achieving isodose curves that are asymmetric about the
longitudinal axis or with respect to the volume of the
apparatus. Rather, the relied-upon sentence is a prelude
to two descriptions of asymmetry about the longitudinal
axis. The rest of the specification is consistent with this
reading. Id. col.5 ll.11-14 (“Radiation source 24 has an
asymmetric configuration with respect to a longitudinal
axis 38 of the instrument 10. That is, radiation source 24
is shaped so as to result in an isodose profile 40 that
varies radially about the longitudinal axis 38.”); id. col.6
ll. 25-29 (“[T]his device specifically alters the isodose
profile for applications where particularly sensitive tissue
15 HOLOGIC v. SENORX
or other concerns result in a desire to limit the dosage on
one or more sides of the device”); id. col.7 ll.5-7 (“The
inner surface 106 is asymmetrically shaped or located
with respect to the longitudinal axis 110 of the device
100”).
The district court also looked to other claims to de-
termine the meaning of the disputed terms. Markman
Op. 2009 WL 416571, at *11. We have explained that
other claims “can also be valuable sources of enlighten-
ment as to the meaning of a claim term.” Phillips, 415
F.3d at 1314 (citing Vitronics, 90 F.3d at 1582). Hologic
wrongly asserts that looking to other terms is only appro-
priate when the comparison is between an independent
claim and the claims that depend from it. Although that
may be an instance where examination of other claims is
worthwhile, Phillips, 415 F.3d at 1314-15, it is not the
only one.
Here, claim 6 specifically refers to a “plurality of ra-
diation sources being provided on at least two elongate
members extending into the apparatus volume, at least
one of the elongate members being shaped to provide
asymmetric placement of a radiation source with respect
to a longitudinal axis through the apparatus volume.”
’142 patent col.10 ll.3-9. Thus, the claim is specific in
requiring at least one of the elongate members to be
asymmetric about the longitudinal axis. As Hologic notes,
however, claim 6 is drawn to a “plurality of radiation
sources,” and allows for some of those sources to be on the
longitudinal axis, while some are displaced by the
changed shape of at least one of the “elongate members”
or lumens. Id. This contrasts with claim 1, which claims
merely “a radiation source,” does not mention “elongate
members,” and therefore may require less specificity in
explaining shape and location of sources with respect to
each other. As we have explained, “[d]ifferent terms or
HOLOGIC v. SENORX 16
phrases in separate claims may be construed to cover the
same subject matter where the written description and
prosecution history indicate that such a reading . . . is
proper.” Nystrom v. TREX Co., 424 F.3d 1136, 1143 (Fed.
Cir. 2005). In any case, the claims are worded sufficiently
differently that there is no indication that this particular
difference should result in an entirely different reading of
the asymmetry of the radiation source in claim 1 that is
not called for by the plain language of the claim and is not
otherwise supported by the specification.
Moreover, no other claim, independent or dependent,
contains a specific limitation that the radiation source is
symmetric with respect to the longitudinal axis. If, as
SenoRx maintains, the specification supports that inter-
pretation, its argument is not backed up by any claim that
recites the only other alternative to an asymmetric
source, viz., a radiation source that is symmetric with
respect to the longitudinal axis.
SenoRx’s argument that figures 3 and 3A show
asymmetry with respect to the apparatus volume but not
with respect to the longitudinal axis is also not convinc-
ing. Those figures show a central lumen with a plurality
of radiation sources (52), some of which are located along
the longitudinal axis; there are also two lumens bent
away from the axis that bear radiation sources (52) at
their ends. Figure 3 shows a side view, with the longitu-
dinal axis proceeding left to right, while figure 3A shows a
view along the longitudinal axis:
17 HOLOGIC v. SENORX
As explained by the district court, however, the result-
ing isodose curve (64) is not symmetric about the longitu-
dinal axis as posited by SenoRx. (Nor, for that matter,
are the radiation sources (52); rather, they are symmetric
about a plane defined by the longitudinal axis and an axis
along the dotted line (62) in figure 3A). Markman Op.
2009 WL 416571 at *11. Because the specification, in-
cluding the figures, consistently and exclusively shows
radiation sources located asymmetrically about the longi-
tudinal axis, and because that is clearly what the inven-
tors of the ’142 patent conceived of, claim 1 is properly
construed as referencing radiation sources that are lo-
HOLOGIC v. SENORX 18
cated and arranged so as not to be on the longitudinal
axis of the expandable surface.
Although as properly construed, claim 1 is drawn to a
radiation source that is asymmetric with respect to the
longitudinal axis of the expandable surface, the limitation
does not necessarily apply to the predetermined isodose
curves, which are specifically dictated by the claim lan-
guage to be asymmetric “with respect to the apparatus
volume.” That construction was not specifically appealed
to us and we take no view upon it here. We do note that
the practical implications of the distinction may be mini-
mal, as the longitudinal asymmetry of the radiation
source may, by necessity, result in asymmetry of the
isodose curves with respect to the longitudinal axis.
We are also not persuaded by SenoRx’s argument in
the alternative that even under Hologic’s proposed claim
construction, the ‘412 patent would be invalid as antici-
pated by Williams. Williams does not disclose asymmetry
about a longitudinal axis in order to create asymmetric
isodose curves. SenoRx relies entirely on figure 3 of
Williams; however, that figure does not clearly show
asymmetry about the longitudinal axis. We decline, on
appeal, to find that a single, hand drawn figure in a
patent unrelated to asymmetric placement of radiation
sources offers clear and convincing evidence of invalidity,
as a matter of law.
We agree with the district court’s refusal of summary
judgment that claim 1 is invalid as inoperable and not
enabled. We find the district court’s reasoning in its
denial of summary judgment persuasive. See Hologic,
2009 WL 416596. The court correctly noted that “al-
though ‘apparatus volume’ was an odd choice of language
to describe what the inventor intended to describe, its use
was consistent in the claim, in accordance with use in the
19 HOLOGIC v. SENORX
prosecution history, and it results in coverage of the
embodiments disclosed.” Id. at *4.
Because the jury’s finding of invalidity of claim 8 was
predicated on the erroneous claim construction of claim 1,
that judgment also cannot stand.
CONCLUSION
For the foregoing reasons, we reverse the district
court’s grant of summary judgment of invalidity of claim 1
of the ’142 patent, and the district court’s judgment of
invalidity of claim 8 of the ’142 patent and remand for
further proceedings consistent with this judgment.
REVERSED and REMANDED
COSTS
Costs to Hologic.
United States Court of Appeals
for the Federal Circuit
__________________________
HOLOGIC, INC., CYTYC CORPORATION,
AND HOLOGIC L.P.,
Plaintiffs-Appellants,
v.
SENORX, INC.,
Defendant-Appellee.
__________________________
2010-1235
__________________________
Appeal from the United States District Court for the
Northern District of California in Case No. 08-CV-0133,
Senior Judge Ronald M. Whyte.
__________________________
FRIEDMAN, Circuit Judge, dubitante:
There is no suggestion, or even hint, in the technical
language of claim 1 of the ‘142 patent that its phrase
“asymmetrically located and arranged within the expand-
able surface” means, as the court holds, “located and
arranged so as not to be on the longitudinal axis of the
expandable surface.” The court accomplished this con-
struction of the patent language primarily by incorporat-
ing into that language the “longitudinal axis” limitation
that is stated several times in the specification.
If that were all this case involved, I probably would
join the opinion.
HOLOGIC v. SENORX 2
But there is much more here that sheds light on the
meaning of this language in claim 1. Two of the other
independent claims – claims 2 and 6 – explicitly refer to
“solid radiation sources,” or “a radiation source,” followed
in each case by the words “with respect to a longitudinal
axis through the apparatus volume.” The use of the term
“a longitudinal axis” in these two claims shows that when
the patentee wanted the claim to include that limitation,
he knew how to do so, i.e., by explicitly including those
words. To me, these facts indicate that, had he intended
claim 1 also to include that limitation, he would have
explicitly included that language in that claim, as he did
in claim 2 and 6, but not in claim 1 or the other two
independent claims.
In short, it seems to me that the district court cor-
rectly construed claim 1 as not including the “longitudinal
axis” limitation.