Wednesday, November 30, 2005

Will a species always support a generic claim under 35 USC 112? More LizardTech.

The iplitigationblog poses the question "getting the sense that the patent system is facing serious problems these days?" but later lapses into a complaint about outcome of the LizardTech case.

The blog notes In that case, the Federal Circuit shot down one of our patent claims as lacking written description, even though the claim elements themselves were all indisputably described and the claim itself was an originally filed claim that was allowed and issued without amendment. Actually, the CAFC found the claim invalid alternatively for written description or for enablement difficulties.

The blog also notes Given that the current law regarding the "written description" requirement is, to put it politely, confused, I am hopeful the Court will soon take the matter up en banc, preferably in my case, but if not, in another. Personally, I think some legal academics, including one who used to be at Berkeley, are far more confused on written description than is the CAFC. Contemplate some law review articles that were written near the time of the University of Rochester case over COX-2 inhibitors. Rochester didn't have any example of a COX-2 inhibitor. LizardTech only had one example of a seamless DWT. The issue is an old one. How many species will it take to support a genus? Clearly more than zero, but will one be enough?

The CAFC noted that it is true that an originally filed claim can provide written description support, nothing in claim 21 or in the specification constitutes an adequate and enabling description of all seamless DWTs.

The CAFC gave a hypo of a claim to a fuel-efficient engine and noted that such a claim would suffice for the particular fuel-efficient engine disclosed but might not cover all fuel-efficient engines. The CAFC did not mention the litigation against Henry Ford over the Selden patent, but that argument is what disposed of the Selden patent.


Blogger Lawrence B. Ebert said...

See also

8:56 AM  

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