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Disclosure of gene from one bacterial source cannot support claims to gene from any bacterial source

By McKee, Voorhees & Sease, P.L.C.

In a recent decision, the Federal Circuit affirmed a district court's grant of summary judgment of non-infringement and invalidity of various claims of three patents.  The district court held no genuine issue of fact existed regarding noninfringement or invalidity under the written description requirement.  

The patents related to DNA polymerases, and the claims at issue covered plasmids containing the gene coding region of DNA polymerase from any bacterial source.  The specifications, however, only disclosed successful use of the DNA polymerase gene from E. coli.  Based on this limited disclosure, the court affirmed the district court's decision that, under Regents of University of California v. Eli Lilly & Co., there was inadequate description to support the broad claims.  Specifically, in order to support the broad claim, "a person of skill in the art [must] understand that the genus that is being claimed has been invented, not just a species of the genus."  Here, only a single species was described, rendering the claims to DNA polymerases from any bacterial source invalid as inadequately described.

More details of Carnegie Mellon Univ. v. Hoffmann-La Roche, Inc. after the jump.

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Full post as published by FileWrapper on September 22, 2008 (boomark / email).