Friday, January 26, 2007

Ariad/Lilly is NOT like Rochester/Searle!

PatentBaristas suggests the Ariad/Lilly case is like Rochester/Searle:

The University of Rochester asserted US 6,048,850 against Searle et al. in a case with many parallels to this one. If anything, claims in the ‘850 patent had more substance than those asserted here, since at least the ‘850 patent specified use of a class of compounds in its method of reducing a biological activity. Nevertheless, the Court of Appeals for the Federal Circuit affirmed the district court’s summary judgment holding the ‘850 invalid for failing to comply with the written description requirement of 35 USC 112 because it did not provide any guidance that would steer the skilled practitioner toward compounds that can be used to carry out the claimed methods - an essential element of every claim of that patent – and has not provided evidence that any such compounds were otherwise within the knowledge of a person of ordinary skill in the art at the relevant time…

On May 11, 2006, IPBiz had a post: Divergences between Ariad/Lilly and Searle/Rochester. In a nutshell, IPBiz noted: Rochester's problem was that it had no COX-2 inhibitor or a reasonable plan to make one. Ariad's problem is apt to be that there are too many prior compounds that fall within the scope of the method claims.

Although PatentBaristas writes "since at least the ‘850 patent specified use of a class of compounds in its method of reducing a biological activity," the problem was that the '850 patent didn't identify any member of the class (Rochester argued to the contrary, but was unconvincing.) What Rochester did have was a method to identify a member of the class. In effect, Rochester could tell you what a "wild turkey" was but couldn't tell you where to find one. If your patent claim is a method to eat a wild turkey Thanksgiving dinner, then Rochester's patent wasn't too helpful. Not surprisingly, it went down on summary judgment.


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