Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[khazzah]

Yeah, okay, I showed my lack of knowledge of current case law by talking about the "upcoming" Ariad v. Lilly en banc.

Of course, everyone knows that the decision came out months ago. 

[JimIvey]

I just read that part of the decision and I don't find any of it illuminating, except perhaps this part:

Perhaps there is little difference in some fields between describing an invention and enabling one to make and use it, but that is not always true of certain inventions, including chemical and chemical-like inventions.

(emphasis supplied)

Another clue:

The written description requirement also ensures that when a patent claims a genus by its function or result, the specification recites sufficient materials to accomplish that function—a problem that is particularly acute in the biological arts.

(emphasis supplied)

I would really like to file this rule away as one that's really only material in chemical and life sciences arts.  Perhaps if I had some experience in those arts, that portion of the opinion might make more sense to me.

Oh well....

Regards.

[bardencj]

If a chemical guy may interject into this interesting thread...

I read the Ariad opinion as yet another gotcha awaiting those of us who wish to protect complex inventions, esp. concerning inventions claimed functionally or in Markush practice.  Most such inventions are probably biotech in nature, but not necessarily; anything with sufficiently broad applicability could run afoul of this largely <i>post hoc</i> "possession" interpretation of the written description requirement.  But it does seem that the CAFC was mostly concerned with biotech, given the examples they provided.

A related issue is that, despite their protestations to the contrary, the court has largely made it very difficult to ensure a proper written description absent an actual reduction to practice.  The court's opinion states that in order to satisfy written description for a generic claim,

the specification must demonstrate that the applicant has made a generic invention that achieves the claimed result and do so by showing that the applicant has invented species sufficient to support a claim to the functionally-defined genus.

How many species are needed, they don't say.  The patent document in suit (as published, anyway -- haven't looked at PAIR) arguably supplies several varied species, based on discovered substances and molecules that had the desired effect in cell lines.  These were even helpfully supplied in a table.  But the majority did not seem to agree with that line of thought.  I say "seem to", because whether they even believe that examples were provided is in question:

The ’516 patent discloses no working or even prophetic examples of methods that reduce NF-KB activity, and no completed syntheses of any of the molecules prophesized [sic] to be capable of reducing NF-KB activity ... the specification at best describes decoy molecule structures and hypothesizes with no accompanying description that they could be used to reduce NF-KB activity. Yet the asserted claims are far broader. (emphases mine)

It's a morass.  If the specification describes molecular structures in a table, in the context of a discussion about how they could be used as decoys to reduce NF-KB activity, how is that not possession of the invention, at least in a narrow context?  What further "accompanying description" would have redeemed it?  If it is now insufficient, I don't see how anything less than synthesis, characterization, purification, and testing of every species will suffice, especially in an unpredictable art.  And that would be a disaster for protecting such inventions.

If generic claims are too broad, enablement can deal with that, so long as we have a good case law of how many/kinds of species are needed to support the genus.  But this business of striking down improvidently granted patents using an amorphous "written description" bogeyman is scary.

[JimIvey]

But this business of striking down improvidently granted patents using an amorphous "written description" bogeyman is scary.

I agree entirely.

One possible application of this bogeyman is that of the classic blocking patents example.  Suppose we have the pioneering patent of Thomas Edison's light bulb and a later improvement patent for fluorescent lights as an example.  Traditionally, Edison would be prohibited from practicing the specific improvements claimed in the fluorescent light patent(s) and the owner of the fluorescent light patent(s) would not be able to practice their innovations due to the broad protections afforded the pioneering patents of Edison.

Now, let's take a look at the written description of Thomas Edison's work.  Hmmm....  I see no mention whatsoever of fluorescent lighting in Edison's work.  He appears to not have been "in possession" of the full breadth of his light bulb patent(s).  So, I guess he didn't really invent the light bulb, at least not as described to just enable others to make the bulbs, to disclose his best mode(s), and claimed so broadly as to be novel and non-obvious. 

And, what's more?  Edison now has no right to even stop others from directly copying his candescent bulbs.

I really don't know whether I can say that "blocking patents" in the traditional sense exist any more.  If you assert a pioneering patent (which is necessarily basic for the pioneered technology) against a product that was sufficiently non-obvious in view of your own patent to get its own patent, I'd say you run a substantial risk of being determined to have not been "in possession" of the non-obvious improvement and to therefore lose your patent(s) altogether.

In the past, the worst that could happen in going after some non-obvious variation of your patented technology was that the accused would not infringe under the reverse doctrine of equivalents.  Now, you can lose your otherwise valid patent(s) altogether.  Absurd!

Regards.