DuPont prevails on a written description defense to patent infringement at the Federal Circuit

The U.S. Court of Appeals for the Federal Circuit found in favor of Finnegan client DuPont, affirming a district court’s grant of JMOL that plaintiff Novozymes’s patent failed to comply with the written description requirement of 35 U.S.C. § 112 and was thus invalid as a matter of law. Novozymes filed a patent application that disclosed vast numbers of prophetic alpha-amylase proteins without any guidance pointing to which of the proteins actually had advantageous properties. Then, some ten years later, in a continuation application, Novozymes claimed a very particular protein with certain properties that was not in any way highlighted in the original application. The Federal Circuit held that the original application did not describe the variants later claimed in the issued patent, noting in its decision that a patent “is not a reward for the search, but compensation for its successful conclusion.”