Ariad Pharmaceuticals et al. v. Eli Lilly & Co.: A Question of Possession

May 21, 2010

By: N. Scott Pierce

BNA's Life Sciences Law & Industry Report

The following is an exercept from this article:

In Ariad Pharmaceuticals et al. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010), the U.S. Court of Appeals for the Federal Circuit held en banc that the first paragraph of 35 U.S.C. § 112 includes a written description requirement that is distinct from enablement to make and use an invention. Specifically, Judge Lourie, for the court, held that 35 U.S.C. § 112, first paragraph, contains a written description requirement separate from an enablement requirement, and that the scope and purpose of the written description requirement is to convey to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.

On June 2, 2009, Ariad Pharmaceuticals, et al. (‘‘Ariad’’) filed a petition in the Federal Circuit for an en banc rehearing to decide whether the Federal Circuit erred by ‘‘engrafting . . . a separate written description requirement onto section 112, paragraph 1’’ and to determine the ‘‘proper test to satisfy the requirements in section 112, paragraph 1.’’ Ariad’s petition repeated the opinion of some commentators that the statutory standard for meeting the written description, as applied in Regents of University of California v. Eli Lilly & Co., 119 F.3d 1559 (Fed. Cir. 1997) (‘‘Lilly’’) in 1997, was ‘‘tantamount to a ‘super enablement’ test.’’ The petition also reiterated Judge Rader’s opinion from his dissent in Rochester that a written description requirement, separate from enablement, did not exist prior to the decision by the U. S. Court of Customs and Patent Appeals in In re Ruschig, 379 F.2d 90 (C.C.P.A. 1967). Even then, according to Judge Rader in his dissent from denial of rehearing en banc in Enzo Biochem, Inc. v. GeneProbe, Inc., 323 F.3d 956 (Fed. Cir. 2002) (‘‘Enzo’’), the written description requirement has been applied only to ‘‘police priority’’ of claimed subject matter.

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May 21, 2010

By: N. Scott Pierce

BNA's Life Sciences Law & Industry Report

The following is an exercept from this article:

In Ariad Pharmaceuticals et al. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010), the U.S. Court of Appeals for the Federal Circuit held en banc that the first paragraph of 35 U.S.C. § 112 includes a written description requirement that is distinct from enablement to make and use an invention. Specifically, Judge Lourie, for the court, held that 35 U.S.C. § 112, first paragraph, contains a written description requirement separate from an enablement requirement, and that the scope and purpose of the written description requirement is to convey to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.

On June 2, 2009, Ariad Pharmaceuticals, et al. (‘‘Ariad’’) filed a petition in the Federal Circuit for an en banc rehearing to decide whether the Federal Circuit erred by ‘‘engrafting . . . a separate written description requirement onto section 112, paragraph 1’’ and to determine the ‘‘proper test to satisfy the requirements in section 112, paragraph 1.’’ Ariad’s petition repeated the opinion of some commentators that the statutory standard for meeting the written description, as applied in Regents of University of California v. Eli Lilly & Co., 119 F.3d 1559 (Fed. Cir. 1997) (‘‘Lilly’’) in 1997, was ‘‘tantamount to a ‘super enablement’ test.’’ The petition also reiterated Judge Rader’s opinion from his dissent in Rochester that a written description requirement, separate from enablement, did not exist prior to the decision by the U. S. Court of Customs and Patent Appeals in In re Ruschig, 379 F.2d 90 (C.C.P.A. 1967). Even then, according to Judge Rader in his dissent from denial of rehearing en banc in Enzo Biochem, Inc. v. GeneProbe, Inc., 323 F.3d 956 (Fed. Cir. 2002) (‘‘Enzo’’), the written description requirement has been applied only to ‘‘police priority’’ of claimed subject matter.

To read the full article, please click on the PDF tab above.

PDF FileView as PDF

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