Tuesday, September 20, 2016

Twists in patent interferences: Yeda v. Abbott and Seed v. Westerman

Abbott prevails over Yeda at CAFC case on Tumor Necrosis Factor α (“TNFα”), with the CAFC writing:

Whether the ’915 patent [of Abbott] is entitled
to benefit from the ’072 application’s filing date
depends on whether the ’072 application provides adequate
written description support for the invention
claimed in the ’915 patent.

We affirm the district court’s 2015 decision that Abbott’s
’915 patent is supported by the written description
of the ’072 application.

Some of the legal issues:

Yeda argues that the district court failed to apply the
correct test for determining the sufficiency of the written

According to Yeda, Abbott must show that at
the time the ’072 application was filed, a person of ordinary
skill in the art would have understood that the
partial N-terminus sequence in the ’072 application
included the additional amino acids identified in the ’915
patent claims at issue.

Abbott responds that the district
court correctly held that the ’072 application need only
describe and enable the TBP-II protein, and that a protein
can be adequately described when a partial amino acid
sequence is disclosed along with other biological characteristics.
Under the doctrine of inherent disclosure, when a
specification describes an invention that has certain
undisclosed yet inherent properties, that specification
serves as adequate written description to support a subsequent
patent application that explicitly recites the
invention’s inherent properties. See Kennecott, 835 F.2d
at 1423.


Therefore, the ’072 application inherently
discloses the remaining amino acids in the N-terminus
sequence of TBP-II and serves as adequate written description
support for the patent claiming TBP-II. It is not
necessary for an application to disclose a protein’s complete
N-terminus sequence in order to provide an adequate
written description of that protein.

The case originated out of an interference:

In 1996, the Board declared Interference No. 103,625
between Abbott’s ’915 patent and Yeda’s Application No.
07/930,443. The Board assigned Abbott the May 1990
filing date of the application that became the ’915 patent
and held that the ’915 patent was invalid as anticipated
by Engelmann. Abbott filed suit in federal district court
seeking review of the Board’s final decision. In 2008, the
district court granted summary judgment for Abbott,
holding that the ’089 patent inherently discloses the
TBP-II protein and provides an adequate written description
of the invention claimed in the ’915 application. The
district court vacated the Board’s decision and remanded
for further proceedings.
On remand, the Board reversed course. In 2010, the
Board held that the ’072 application sufficiently disclosed
TBP-II for the ’915 patent to benefit from the ’072 application’s
May 1989 filing date. Yeda filed a district court
action seeking review of the Board’s 2010 determination.
In 2015, the district court affirmed the Board’s decision
and granted Abbott summary judgment.

**In passing, PatentlyO discusses some interesting aspects arising
out of another patent interference.

Judgmental Immunity in Patent Malpractice Cases

There are many twists in Seed Co. v. Westerman, (D.C. Cir. Aug. 12, 2016). The U.S. patent applicant Seed was claiming priority to a Japanese application, through a PCT application (written in Japanese). The asserted malpractice was because the patent attorneys provided to the USPTO an English translation of the Japanese application BUT NOT of the PCT (also written in Japanese), and Seed lost the interference. Seed went after the patent attorneys. By spending more money at the PCT stage, Seed got extra time to prosecute the case, but by spending less money in not doing the translation of the PCT in Japanese, Seed lost the case.


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