Abbvie loses on "written description" grounds
We also hold that record evidence
sufficiently supported the jury verdict
that the asserted claims lacked
adequate written description
under 35 U.S.C. § 112, ¶ 1 (2006)
As an intriguing point, the CAFC cited Festo as to "written description,"
as well as O'Reilly v. Morse (1853).
Getting into a problematic area, the CAFC made an analogy to "species" residing on a plot of land, and found
the species in this case resided on only a portion of the land. That turns out to be a problem.
The CAFC cited Ariad, not Rochester, for the "research plan" issue. A disclosure
that is merely a plan for finding species [on the plot of land], rather than disclosing the species, does
not satisfy written description.
The problem for Abbvie, according to the CAFC, was that the patent specification did
not disclose species structurally similar to the accused antibody. The topic of structure
and function arose. Functionally defined genus claims can be inherently vulnerable to
invalidity attack. Could an infringement defendant do research to find new, structurally distinct,
members of a genus (but not related to an accused species) and invalidate a genus claim?
The interesting outcome is that because Abbvie did not show possession of antibodies
structurally similar to the accused antibody the entire genus claim was invalid.
A practice tip is to have a claim specifically directed to genus members having an
identified structural similarity.
Footnote 6 explicitly thanked authors of two amicus briefs.
Judge O'Malley concurred in the result, but not in the reasoning, and expressed
no opinion about the written description analysis.