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Tag Archives: Written Description

Federal Circuit Finds No Written Description for “Analogs”

Posted by Courtenay Brinckerhoff on Posted in Federal Circuit Decisions

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 describe any specific analogs and were deemed invalid.

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Diagnostic Test For Genetic Mutation Fails Written Description Requirement Where Mutation Was Not Disclosed

Posted by Courtenay Brinckerhoff on Posted in Federal Circuit Decisions

In Billups-Rothenberg, Inc. v. Associated Regional And University Pathologists, Inc., the Federal Circuit affirmed the district court’s grant of summary judgment of invalidity based on a lack of written description. The claims at issue were directed to methods of diagnosing a disease by detecting a specific genetic mutation associated with that disease, but the patent did not disclose any such genetic mutation.

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Join Me In a Telebriefing Seminar on Centocor

Posted by Courtenay Brinckerhoff on Posted in Federal Circuit Decisions

On Thursday, March 31, at 3:00 PM Eastern Time (12:00 PM Pacific Time), I will be speaking during a Law Seminars International TeleBriefing titled “Centocor Ortho Biotech, Inc. v. Abbott Laboratories,” discussing the impact of the Federal Circuit’s recent decision.

The panel consists of:

  • Donald L. Zuhn, Ph.D, Esq., McDonnell Boehnen Hulbert & Berghoff LLP, Chicago, IL
  • Courtenay C. Brinckerhoff, Esq., Foley & Lardner LLP, Washington, DC
  • Chris Homan, Ph.D., Esq., University of Missouri–Kansas City School of Law, Kansas City, MO

The cost is $175 per caller and $50 each for additional people on the same line who wish to receive continuing education credit.

For more information and to register, click here.

I have written two articles on Centocor:

  1. The Written Description Requirement for Antibodies (Centocor Part I)
  2. A Tale of Two Antibodies (Centocor Part II)

A Tale of Two Antibodies (Centocor Part II)

Posted by Courtenay Brinckerhoff on Posted in Federal Circuit Decisions; Written Description

As I wrote last week, the Federal Circuit held in Centocor Ortho Biotech, Inc. v. Abbott Laboratories, that the human antibody claims that Centocor had asserted against Abbott’s Humira® product are invalid for failing to satisfy the written description requirement of 35 USC § 112. The holding is getting lots of attention because it will negate a $1.67 billion damages award, but it also may be important as a cautionary tale for those who would “ensnare” competitors with later-filed claims alleged to be supported by an early-filed disclosure.

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The Written Description Requirement for Antibodies (Centocor Part I)

Posted by Courtenay Brinckerhoff on Posted in Federal Circuit Decisions; Written Description

Yesterday, in Centocor Ortho Biotech, Inc. v. Abbott Laboratories, the Federal Circuit held that the human antibody claims that Centocor had asserted against Abbott’s Humira® product (claims 2, 3, 14 and 15 of U.S. 7,070,775) are invalid for failing to satisfy the written description requirement of 35 USC § 112. (This decision will negate a $1.67 billion damages award by the jury in the trial court proceeding). I will write more about this decision soon, but for now I want to highlight the court’s discussion of the Written Description Guidelines for antibody claims.

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