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Federal Circuit Reverses a Jury's Finding in Favor of Finnegan Client Eli Lilly

April 3, 2009

Related Professionals: Racine, Richard B.

Press Release

April 3, 2009

Contact:   Richard B. Racine, 202.408.4038 
                   Managing Partner

Federal Circuit Reverses a Jury's Finding in Favor of Finnegan Client Eli Lilly


Washington, DC - In Ariad Pharmaceuticals, Inc. v. Eli Lilly and Company (Fed. Cir. Apr. 3, 2009), the Federal Circuit reversed a jury’s finding that four claims of Ariad’s U.S. Patent No. 6,410,516 were valid and infringed by Lilly’s sale of  Evista® (marketed for the treatment and prevention of osteoporosis in post-menopausal women), and Xigris®  (marketed for the treatment of severe sepsis in adults).  The jury had awarded Ariad sixty-five million dollars in damages and a running royalty.

The claims of the ’516 patent at issue broadly covered any and all methods of inhibiting a signaling molecule called “NF-κB,” which is implicated in turning on gene expression in cells.  The patent’s teachings, however, were quite limited.  The Federal Circuit explained that “Ariad chose to assert claims that are broad far beyond the scope of the disclosure provided in the specification of the ’516 patent.”  (Slip Op. at 16.)  As such, the Federal Circuit held that the claims were invalid for failing to satisfy the written description requirement of 35 U.S.C. § 112.  This requirement prevents attempts “to preempt the future before it has arrived” and ensures that “‘the scope of the right to exclude’ must not ‘overreach the scope of the inventor’s contribution to the field of art as described in the patent specification.’”  (Slip Op. at 15-16 (citations omitted).)

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