Sunday, June 07, 2009

Ariad returns?

Patently-O has a post entitled Written Description: Araid Petitions en banc Federal Circuit to Eliminate Separate Written Description Requirement which includes a brief signed by John Whealan but listing James Dabney (once of Pennie & Edmonds and later of KSR fame) and John Duffy as authors.

To say the brief is a disappointment would be an understatement. The "statement of counsel" signed by John Whealan states:

Based on my professional judgment, I believe the panel decision is
contrary to the following decisions of the Supreme Court of the United
States: The Telephone Cases 126 U.S. I (1888); Tilghman v. Proctor,
102 U.S. 707 (1881).

Based on my professional judgment, I believe this appeal requires an
answer to the following questions of exceptional importance:
(I) Whether this Court has erred by "engrafting . . . a separate
written description requirement onto section 112, paragraph 1 ....
" Ariad
Pharms., Inc. v. Eli Lilly & Co., 560 F.3d 1366, 1380 (Fed. Cir. 2009) (Linn,
J., concurring).

(2) What is the proper test to satisfy the requirement in Section
112, paragraph 1, that a patent specification contain "a written description of
the invention, and of the manner and process of making and using it, in such
full, clear, concise, and exact terms as to enable any person skilled in the art
to which it pertains, or with which it is most nearly connected, to make and
use the same"?

Wasn't the current patent act, of which 35 USC 112 P1 is a part, written in 1950, well after the cited Supreme Court cases of 1881 and 1888? It is hard to fathom why 19th century cases should be used to interpret a 20th century statute in the 21st century. Moreover, didn't the Supreme Court, in the Festo decision (after 1950), acknowledge the existence of both written description and enablement requirements? Also, the CAFC was pretty clear in Rochester v. Searle that there were two requirements, and that case was a poster child for why written description and enablement need to be separate.

There are some ironies here. Judge Moore wrote the panel decision on Ariad. Judge Moore is nominally associated with "patent reform" elements. As a professor, she co-authored "Ending Abuse..." with Mark Lemley. Many academic people have been pushing and pushing to eliminate "written description." Here, as in Rochester v. Searle, written description was used to "deep six" questionable and seemingly overreaching patents which came out of academe. Both cases are "poster children" to question Bayh-Dole, because they are examples wherein academics have tried to "cash in" with later-issued patents used against already-existing commercial products, not at all the goal of the Bayh-Dole Act.

The brief of Whealan et al. included the text:

Research universities and small biotechnology companies will
be disadvantaged. See Rochester Denial, 375 F.3d at 1313-14 (Rader, J.,
dissenting); Moba, 325 F.3d at 1326 (Rader, J., concurring). This Court’s
separate written description requirement “presents severe consequences for
biotechnology.” Id. at 1325. As shown by the caption, the inventors here
worked at three of the finest research institutions in the world: Harvard
University, MIT, and the Whitehead Institute. Similarly, the patents at issue
in Rochester and Lilly both stemmed from research universities (University
of Rochester and University of California, respectively). In all three cases,
research university patents were held invalid based on the written
description doctrine.

"Hang down your head John Whealan." [with apologies to Tom Dula] In Rochester v. Searle, the University of Rochester had no COX-2 inhibitor but, on the VERY DAY the Rochester
patent issued, sued Searle, who had already marketed (without help from the knowledge of Rochester's patent) a COX-2 inhibitor. [How useful the whole area was, in view of Vioxx, can also be questioned. The role of Pennie & Edmonds in this matter is also of interest.]

Link to Patent Docs: Ariad Files Petition for Rehearing in Ariad v. Lilly

TrackBack URL for Patent Docs post [Note Patent Docs does not list IPBiz in its PATENT BLOGS & SITES nor does IP WatchDog include IPBiz in its LINKS]

**Observation on 12 June 09. In spite of the "trackback" above, nothing appeared on Patent Docs:

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**UPDATE. On Judge Rader.

Judge Randall R. Rader - The role of IPR in maintaining an innovative economy


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