In In Re Bimeda Research & Development Ltd., the Federal Circuit upheld the decision of the USPTO Patent Trial and Appeal Board (PTAB) that found that a claim that excluded the presence of a specific compound was not supported by a description that excluded a genus of compounds. This case illustrates the challenges of establishing written description for exclusion of specific embodiments.Continue reading this entry
In Novozymes A/S v. DuPont Nutrition Biosciences APS, the Federal Circuit determined that the Novozymes amylase patent at issue did not satisfy the written description requirement of 35 USC § 112, because the disclosure did not demonstrate possession of the claimed subject matter as a whole. While the opinion states that the decision is consistent with other Federal Circuit case law (such as University of Rochester v. G.D. Searle & Co. (Fed. Cir. 2004)), I find the court’s analysis to reflect an EPO-type analysis. Indeed, the majority states that Novozymes needed to have actually reduced the claimed subject matter to practice in order to satisfy the written description requirement.
As I wrote last week, the Federal Circuit held in Centocor Ortho Biotech, Inc. v. Abbott Laboratories, that the human antibody claims that Centocor had asserted against Abbott’s Humira® product are invalid for failing to satisfy the written description requirement of 35 USC § 112. The holding is getting lots of attention because it will negate a $1.67 billion damages award, but it also may be important as a cautionary tale for those who would “ensnare” competitors with later-filed claims alleged to be supported by an early-filed disclosure.
Yesterday, in Centocor Ortho Biotech, Inc. v. Abbott Laboratories, the Federal Circuit held that the human antibody claims that Centocor had asserted against Abbott’s Humira® product (claims 2, 3, 14 and 15 of U.S. 7,070,775) are invalid for failing to satisfy the written description requirement of 35 USC § 112. (This decision will negate a $1.67 billion damages award by the jury in the trial court proceeding). I will write more about this decision soon, but for now I want to highlight the court’s discussion of the Written Description Guidelines for antibody claims.
In Goeddel v. Sugano, the Federal Circuit determined that a priority application that disclosed the gene encoding a full-length “precursor” protein did not constitute constructive reduction to practice of interference counts that focused on the “mature” protein. This decision is an important reminder that a disclosure that might be effective to render a claim obvious may nonetheless be ineffective to support a priority claim.