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Disclosure of compounds without link to claimed method fails to meet written description requirement

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

In a recent decision, the Federal Circuit reversed a district court's denial of judgment as a matter of law after a jury determined the asserted claims of an invention were not invalid under the written description requirement.  The court, however, affirmed the district court's determination of no inequitable conduct.

The Federal Circuit held the jury lacked substantial evidence for its verdict.  Specifically, the court noted that vague functional descriptions are essentially invitations for skilled artisans to conduct further research and therefore are not sufficient description to meet the written description requirement of § 112.  The specification disclosed three classes of compounds that could be used in the claimed methods.  However, it only disclosed specific examples of one of the classes of compounds, and did not disclose any examples of the described compounds actually linked to use in the claimed method.  The patentee was further hampered in that the jury held the patent was entitled to a priority date of 1989, but most of the patentee's testimony and other evidence regarding the written description issue centered on the application's filing date in 1991.  The court held none of this evidence could support the jury's verdict, as it was directed to the wrong timeframe.  Therefore, the court held the written description requirement not met, and the asserted claims invalid.

The court affirmed the district court's holding of no inequitable conduct.  Neither party contested the relevant acts (failing to correct a figure and to disclose certain non-prior art references that were relevant to patentability) were properly held material.  The Federal Circuit agreed with the district court that there was insufficient evidence of intent to deceive to support a finding of inequitable conduct.

More on Ariad Pharms., Inc. v. Eli Lilly & Co. after the jump.

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Full post as published by FileWrapper on April 14, 2009 (boomark / email).