Tag Archives: Enablement

Federal Circuit Finds Wyeth Restenosis Claims Invalid As Not Enabled

In Wyeth v. Abbott Laboratories, the Federal Circuit affirmed the district court’s decision that the claims at issue are invalid for failing to satisfy the enablement requirement of 35 USC § 112. The court took only 10 pages to explain why a specification that describes one specific compound did not enable claims encompassing tens of … Continue reading this entry

Challenging The Enabling Quality Of Prior Art

In In re Morsa, the Federal Circuit reversed an anticipation rejection where the applicant had challenged the enabling quality of the cited prior art reference, even though the applicant had not submitted evidence in support of its position. While the court agreed with the USPTO that a prior art reference is presumptively enabled, it held … Continue reading this entry

Federal Circuit Upholds Fentora Patents, But Affirms Non-Infringement

In Cephalon, Inc. v. Watson Pharmaceuticals, Inc., the Federal Circuit reversed the district court’s finding that two Orange Book-listed patents for Cephalon’s FENTORA® product were invalid, but affirmed the district court’s finding that Watson’s ANDA product would not infringe the patents. The Federal Circuit decision reviews the “undue experimentation” standard for lack of enablement, and … Continue reading this entry

Federal Circuit Holds That Prior Art Cited By USPTO Is Presumptively Enabled

In In re Antor Media Corp., the Federal Circuit held that a prior art reference cited by a USPTO Examiner is presumptively enabled, even when the reference at issue is a printed publication. Although Antor had submitted a declaration regarding the non-enabling quality of the prior art at issue, the court found that it was … Continue reading this entry

Federal Circuit Finds No Written Description for "Analogs"

In Boston Scientific Corp. v. Johnson & Johnson, the Federal Circuit affirmed the district court’s determination that a series of stent patents are invalid for failing to satisfy the written description requirement of 35 USC § 112, first paragraph. The claims at issue recite stents that elute certain rapamycin “analogs,” but the patents did not … Continue reading this entry

Solving Utility Problems

The Federal Circuit decisions in Cancer Research Technolgoy Ltd. v. Barr Labs., Inc. (Nov. 2010) and In Re '318 Patent Infringement Litigation ("Janssen") (Sep. 2009) present an interesting contrast in utility issues. In Cancer Research, the USPTO raised utility rejections that the Applicant eventually overcame and the patent was found to be enforceable, while in Janssen, the USPTO never raised the issue but both the district court and the Federal Circuit found the patent invalid for lack of utility. The Federal Circuit may address the issue again this week, when it hears oral arguments in Eli Lilly & Co. v. Actavis on Thursday.bv … Continue reading this entry