March 2010

Spotlight Info

In Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., No. 08-1248 (Fed. Cir. Mar. 22, 2010) (en banc), the Federal Circuit, sitting en banc, reaffirmed that 35 U.S.C. § 112, ¶ 1, contains a written description requirement separate from enablement.  Citing the statutory language itself, Supreme Court precedent, and principles of stare decisis, the Court held that the test for sufficiency of the written description is whether, based on an objective inquiry into the four corners of the specification, it reasonably conveys to those skilled in the art that the inventor had actually invented and described the claimed subject matter as of the application’s filing date.

Applying the law to the case at hand, the Court held that the asserted claims of Ariad Pharmaceuticals, Inc.’s (“Ariad”) patent failed to satisfy the written description requirement of § 112 and were therefore invalid.  In so doing, the Court reversed a multimillion dollar jury verdict finding Eli Lilly and Company liable for infringing Ariad’s patent, which claimed any method for inhibiting NF-κB, a transcription factor that regulates gene expression.   See the full summary of the Ariad decision in next month’s edition of Last Month at the Federal Circuit.