The Federal Circuit Affirmed its Written Description Doctrine

Ariad Pharms., Inc. v. Eli Lilly & Co., No. 2008-1248 (Fed. Cir. Mar. 22, 2010).

Holding:

35 U.S.C. §112, paragraph 1, contains a written description requirement separate from an enablement requirement. Slip op. at 23.

The test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Id.

Relevant Facts:

Ariad sued Eli Lilly for infringement of U.S. Patent 6,410,516. A jury found the asserted claims valid and infringed. A panel of the Federal Circuit reversed the district court’s denial of Lilly’s motion for judgment as a matter of law (“JMOL”) and held the asserted claims invalid for lack of written description. Ariad petitioned for rehearing en banc, challenging the Federal Circuit’s interpretation of 35 U.S.C. § 112, first paragraph, as containing a separate written description requirement. The Federal Circuit affirmed its written description doctrine and affirmed the panel’s ruling.

Comments:

The difference (or lack of it) between the written description requirement and the enablement requirement means little for electrical and mechanical inventions, but not always true for chemical or chemical-like inventions having genus claims:

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. Thus, although written description and enablement often rise and fall together, requiring a written description of the invention plays a vital role in curtailing claims that do not require undue experimentation to make and use, and thus satisfy enablement, but that have not been invented, and thus cannot be described. For example, a propyl or butyl compound may be made by a process analogous to a disclosed methyl compound, but, in the absence of a statement that the inventor invented propyl and butyl compounds, such compounds have not been described and are not entitled to a patent.

Slip op. at 29.