Recent Decisions Affecting Patent Law

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1 Recent Decisions Affecting Patent Law IPO Annual Meeting 2010 By: Meg Boulware Baker & McKenzie International is a Swiss Verein with member law firms around the world. In accordance with the common terminology used in professional service organizations, reference to a partner means a person who is a partner, or equivalent, in such a law firm. Similarly, reference to an office means an office of any such law firm.

2 Ariad v. Lilly, 598 F. 3d 1336 ( Fed Cir. 2010) Section 112 first paragraph includes separate written description and enablement requirements. Subject matter of patent active and inactive form of a protein, NFkB, that mediates human immune response by producing proteins know as cytokines. Important discovery that has implications for a number of disease states.

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4 Claims to the following compositions: 1. Specific inhibitors to NFkB molecule that inactivates NFkB, one example in specification the naturally occurring I-kB. 2. Dominantly interfering molecule binds DNA site in nucleus but does not produce immune response. 3. Decoy molecules mimics binding site in nucleus, prophetic examples provided in specification.

5 Federal Circuit agreed with Lilly the specification shall contain a written description of the invention and [we] hold that 112, first paragraph, contains two separate description requirements: a written description [i] of the invention, and [ii] of the manner and process of making and using [the invention]. 35 U.S.C. 112, 1 (emphasis added). 598 F.3d at 1344

6 Federal Circuit Reasoning Genus claimed that can include hundreds of compounds, but species not described in specification. Claims recited a problem to be solved while claiming all solutions. The decoy molecules are prophetic examples of desired outcome not sufficient for unpredictable biotech art.

7 Federal Circuit Majority Patent is not a hunting license or a reward for basic research. BUT multiple concurring and dissenting opinions.

8 Other Opinions J. Gajarsa concurs but states: the text of 112 paragraph 1 is the model of legislative ambiguity up to Congress to clarify. J. Newman: The importance of 101 to patentability of this subject matter was submerged in rhetoric of measuring the patent validity under the 112 requirements.

9 Dissents Now Chief J. Rader: Strong dissent 112 while cumbersome is unambiguous. No statutory support for separate written description requirement from enablement; majority opinion is judicial adventurism. J. Linn agreed no separate written description requirement apart from enablement. Ariad did not file Pet. for Cert. to Supreme Court.

10 Ariad Applications Patent Prosecution No Change Practioners always cautioned to provide as many examples in unpredictable arts as possible. Litigation and Freedom to Operate Change. Ariad provides more viable attack under 112 for generic claims.

11 Telecordia v. Lucent F.3d ( Fed Cir 2010) Application of means-plus function claim interpretation for black box drawings. Claim construction of monitoring means to be interpreted under The patent showed black boxes without description of the inner circuitry and challenged for lack of description to support means-plus function.

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13 Technology Makes a Difference Federal Circuit agreed with district court that credible expert testimony was not refuted that ordinary artisan would understand the link between the controller and the monitoring function cited in the claim. Patent not invalid under 112 Decision underscores the difference in predictable and unpredictable technology. Comfort to those dealing in technology with known structures.

14 SEB S. A. v. Montgomery Ward, 594 F. 3d 1360 ( Fed Cir. 2010) Ignoring possible patent protection can lead to finding of inducement of infringement.

15 Factual Background Manufacturer of deep fryers copied a patented product and sold to retailers in the US. President of the manufacturer that copied the patent is inventor of US patents. Manufacturer commissioned a patent search, but neglected to tell the patent attorney about copying the design and got a clean report on patent infringement.

16 Holding Was manufacturer liable for inducement and had knowledge of the patent to satisfy the statutory requirement? No direct evidence of knowledge of the patent. However, the record in the trial court supports deliberate disregard of a known risk and a finding of inducement. Federal Circuit states this case does not set the outer limits on inducement.