Patent Law

The reliance of the Carnegie-Mellon court on Eli Lilly

By Lawrence B. Ebert, Esq.

[Roche argued for claims] invalid for lack of written description under our holding in Regents of University of California v. Eli Lilly & Co., 119 F.3d 1559

On June 27, 2001, relying on Eli Lilly, the district court granted Roche?s motion for summary judgment of invalidity with regard to the ?708 patent. Carnegie Mellon Univ. v. Hoffmann-La Roche, Inc., 148 F. Supp. 2d 1004 (N.D. Cal. 2001).

Of Lilly, the CAFC noted:

In Eli Lilly, we held that ?the claimed genera of vertebrate and mammal cDNA
[were] not described by the general language of [a] patent?s written description
supported only by the specific nucleotide sequence of rat insulin.? 119 F.3d at 1569.
That holding was premised on the basic principle that a person of skill in the art must be
able to ?visualize or recognize the identity of the members of the genus.? Id. Thus, to
satisfy the written description requirement for a claimed genus, a specification must
describe the claimed invention in such a way that a person of skill in the art would
understand that the genus that is being claimed has been invented, not just a species of
the genus.

Full post as published by IPBiz on September 14, 2008 (boomark / email).