PharmaPatents Timely Insight on Emerging Legal Developments

Category Archives: Written Description

Federal Circuit Affirms Board Finding That Exclusion Of Genus Does Not Provide Written Description For Exclusion Of Species

Posted in Federal Circuit Decisions; USPTO Board Decisions; Written Description

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

Federal Circuit Finds No Written Description Support For Novozymes Amylase Patent

Posted in Federal Circuit Decisions; Uncategorized; Written Description

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.  

Continue reading this entry

A Tale of Two Antibodies (Centocor Part II)

Posted in Federal Circuit Decisions; Written Description

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.

Continue reading this entry

The Written Description Requirement for Antibodies (Centocor Part I)

Posted in Federal Circuit Decisions; Written Description

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.

Continue reading this entry

Written Description: When Too Much Is Not Enough

Posted in Federal Circuit Decisions; Written Description

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.

Continue reading this entry