CAFC reverses PTAB on "written description" issue in Tobinick interference case

In the appeal of the interference decision in TOBINICK v. OLMARKER , the CAFC agreed with the Board’s claim construction but reversed its written
description decision.

As to written description, the parties disputed whether the ’205 application provides
written description support for the term “administered locally.”

As to the law


The purpose of the written description requirement is to
require an inventor to disclose his invention to the public
in such a manner as to allow “a person of skill in the art
to recognize that the patentee invented what is claimed.”
Synthes USA, LLC v. Spinal Kinetics, Inc., 734 F.3d 1332,
1341 (Fed. Cir. 2013) (citing Ariad Pharms., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc)). The written description determination depends on
“the nature and scope of the claims and on the complexity
and predictability of the relevant technology.” Id. (citing
Capon v. Eshhar, 418 F.3d 1349, 1357-58 (Fed. Cir.
2005)). Accordingly, we must determine whether the
disclosure of the ’205 application “reasonably conveys to
those skilled in the art” that Tobinick “had possession” of
the claimed local administration. Id. (internal citations
omitted).

“Written description is a question of fact, judged from
the perspective of one of ordinary skill in the art as of the
relevant filing date.” Falko-Gunter Falkner v. Inglis, 448
F.3d 1357, 1363 (Fed. Cir. 2006) (citing Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991)).