Federal Circuit Reaffirms The Existence Of A Written Description Requirement Separate From The Enablement Requirement

On March 22, 2010, the Federal Court issued its en banc decision in Ariad Pharmaceuticals, Inc. v. Eli Lilly & Company [2010 U.S. App. LEXIS 5966], reaffirming that 35 U.S.C. § 112 , ¶ 1 contains a written description requirement separate from the enablement requirement. An earlier panel...

The Patent Reexamination Paradox of 35 USC 112

It would be so nice if something made sense for a change - Alice (in Wonderland) Earlier this week, the BPAI affirmed the rejection of certain means-plus-function claims of patent 5,283,862 in Ex Parte Lund (BPAI 2010-005851). Claim 1 recites the following elements: A portable computer unit...

Sutherland Legal Alert: The Written Description Requirement Revisited, Giving Caution to Biotech Patent Owners

By Bill Warren and Pete Pappas On February 23, 2011, in Centocor Ortho Biotech, Inc. v. Abbott Labs., No. 2010-1144 [ enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE Free Case Law ], a three-judge panel of the U.S. Court of Appeals for the Federal Circuit...

Patents Post-Grant: Attacking 112 Support in Patent Reexamination

NTP Decision Explains Propriety of 112 Analysis in Patent Reexamination MPEP §§ 2258 and 2658 explain that, during a reexamination proceeding, the USPTO will not analyze originally issued claim language with respect to 35 U.S.C. § 112 , 1st paragraph. (It will, however, consider...