En Banc Federal Circuit Holds Section 112, First Paragraph Does Include A Separate Written Description Requirement

In Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) [enhanced version available to lexis.com subscribers /  unenhanced version available from lexisONE Free Case Law], the Federal Circuit, sitting en banc, held that the first paragraph of 35 U.S.C. § 112 does contain a written description requirement separate from the enablement requirement. The court further held that this requirement applies to both original and amended claims. In this Analysis, Tamsen Barrett of Fulbright and Jaworski discusses this important case. She writes:

En Banc Decision

     The Federal Circuit cited numerous reasons for its finding that the first paragraph of Section 112 contains an independent written description requirement. First, the court performed a grammatical analysis of the statute. Based on this analysis, the court determined that there is nothing grammatically improper in finding that a plain reading of the statute requires two separate requirements: "a written description [i] of the invention and [ii] of the manner and process of making and using [the invention]." Turning to the legislative history, the court stated that since 1793, the Patent Act has "expressly stated that an applicant must provide a written description of the invention." Furthermore, the court explained that this language was recodified by Congress in 1952, at which time there was no indication that Congress intended to eliminate the written description requirement. Finally, the court explained that Supreme Court case law and its own existing precedent supported the existence of a separate written description requirement. From a policy standpoint, the court noted that the separate written description requirement serves the interests of the U.S. Patent Office, the courts, and the public.

     The en banc panel also explained that there was no support for Ariad's argument that the written description requirement is limited to priority determinations. Specifically, it determined that "neither the statute nor legal precedent limits the written description requirement to cases of priority." Further, the court explained that nothing in the statute or precedent distinguished the description requirements for original or amended claims. More particularly, the appellate court explained that even though "many original claims will satisfy the written description requirement, certain claims will not." In the end, the court held that "generic language in the application as filed does not automatically satisfy the written description requirement."

(citations omitted)

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