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March 22, 2010

On March 22, 2010 the Federal Circuit, in an en banc opinion, confirmed the existence of a separate written description requirement that ensures that inventors have actually invented and described the subject matter claimed in their patents, ruling in favor of Finnegan client Eli Lilly and Company. The en banc decision, garnering support from nine of the eleven active judges of the Federal Circuit, considered the written description requirement, confirmed that it was a separate requirement for patentability from enablement, and provided further guidance on how it should be applied. Unless the law is changed by the U.S. Supreme Court in a future case, or by Congress, this decision will stand as the definitive statement on the doctrine.

According to the en banc court, well-established precedent has long required that a patentee’s disclosure must do more than allow another to make and use the claimed invention. The disclosure must also describe the invention itself. The existence of this separate written description requirement has been questioned in a number of dissenting panel opinions, but the Federal Circuit’s en banc decision confirmed the existing precedent and made several important observations about the doctrine. First, the court explained that the written description requirement applies to both original and amended claims. Second, the court stated: “[T]he test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art,” and “[b]ased on that inquiry, the specification must . . . show that the inventor actually invented the invention claimed.” Third, the court stated that the satisfaction of the written description depends on the nature and scope of the claims and on the complexity and predictability of the relevant technology. The court rejected, however, any bright line rules to show compliance with the requirement, explaining that the written description requirement remains a question of fact that does not require an actual reduction to practice.

In concluding its opinion, the en banc court explained that the doctrine serves an important public policy function as mere “[c]laims to research plans . . . impose costs on downstream research, discouraging later invention. The goal is to get the right balance, and the written description doctrine does so by giving the incentive to actual invention and not ‘attempt[s] to preempt the future before it has arrived.’”

Media Resources

Press Release - Federal Circuit Rules in Favor of Finnegan Client Eli Lilly and Company, Confirming the Existence of a Separate Written Description Requirement, 3.22.2010
Press Release - Finnegan Files Principal Brief for Client Eli Lilly and Company in Closely Watched "Written Description" Case, 11.16.2009
Press Release - Federal Circuit Reverses a Jury's Finding in Favor of Finnegan Client Eli Lilly, 4.3.2009
Court Documents

Federal Circuit Opinions and Orders
U.S. Court of Appeals for the Federal Circuit Opinion, 4.3.2009
U.S. Court of Appeals for the Federal Circuit Order Granting Rehearing en banc, 8.21.2009
U.S. Court of Appeals for the Federal Circuit en banc Oral Argument, 12.7.2009
U.S. Court of Appeals for the Federal Circuit en banc Opinion, 3.22.2010

Parties' en banc Rehearing Briefs
Ariad Pharmaceuticals, Inc. Petition for Rehearing en banc, 6.2.2009
Ariad Pharmaceuticals, Inc. Principal Brief on Rehearing en banc, 10.5.2009
Eli Lilly and Company Principal Brief on Rehearing en banc, 12.9.2009
Ariad Pharmaceuticals, Inc. Reply Brief on Rehearing en banc, 12.30.2009
Patent in Suit

U.S. Patent No. 6,410,516
Amicus Briefs Filed for Ariad Pharmaceuticals, Inc. v. Eli Lilly and Company

Abbott Laboratories
American Intellectual Property Law Association (AIPLA)
Amgen, Inc.
Professor Christopher A. Cotropia
Christopher Holman
Federal Circuit Bar Association
Google Inc., Verizon Communications Inc., and Cisco Systems, Inc.
Hynix Semiconductor Inc. and Samsung Electronics Co., Ltd.
Intellectual Property Owners Association (IPO)
Mark D. Janis and Timothy R. Holbrook
Medtronic, Inc.
Microsoft Corp.
Monsanto Co.
New York Intellectual Property Law Association
Novozymes A/S
Oskar Liivak
Public Patent Foundation
Regents of the University of California, Wisconsin Alumni Research Foundation, The University of Texas System, University of Rochester, Rensselaer Polytechnic Institute, STC.UNM, The Research Foundation of State University of New York, NDSU Research Foundation, and Research Corporation Technologies, Inc.
Dr. Roberta J. Morris
United States
University of Kentucky Intellectual Property Law Society, Universal Support Systems LLC, Polymer Construction Products Ltd., and Safeteccs LLC
Washington Legal Foundation

Copyright © Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.