Attorneys, business executives, technical professionals and expert witnesses involved in patent enforcement and litigation.
Last month, in Centocor Ortho Biotech, Inc. v. Abbott Laboratories, the U.S. Court of Appeals for the Federal Circuit determined that the asserted claims of Centocor's patent to recombinant anti-TNF-a antibodies comprising a human variable region were invalid for lack of written description. At trial, a jury had found the asserted claims valid and Abbott liable for willful infringement, awarding Centocor $1.67 billion in damages. The Federal Circuit, however, determined that while Centocor's patent broadly claims a class of antibodies containing human variable regions, the patent does not describe a single antibody that satisfies the claim limitations or any relevant identifying characteristics for the genus of claimed antibodies. The Federal Circuit was also not persuaded by Centocor's argument that under Noelle v. Lederman and the USPTO Written Description Guidelines, it provided an adequate written description for anyantibody that binds to human TNF-a.
Despite some language in the decision suggesting otherwise, Centocor does not appear to be a typical "reach back CIP" case, in which the patentee tries to find support for later filed claims in an earlier application. Rather, the case more directly addresses the type of disclosure necessary to support specific antibody claims. In drawing a line between the USPTO's Written Description Guidelines and the facts presented, the Federal Circuit looked to its earlier decision in Noelle, and applied a test that considered whether the "four corners" of the application evidenced "constructive possession" of the subject matter at issue.
In this one-hour TeleBriefing, our distinguished panel of experts will discuss the practical implications of this important patent decision.
Introduction & Overview
Donald L. Zuhn, Jr., Ph.D., Esq., Moderator
McDonnell Boehnen Hulbert & Berghoff LLP / Chicago, IL
Practical Implications of the Decision
Courtenay C. Brinckerhoff, Esq.
Foley & Lardner LLP / Washington, DC
Chris Holman, Ph.D., Esq., Associate Professor of Law
University of Missouri--Kansas City School of Law / Kansas City, MO
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Donald L. Zuhn, Ph.D., Esq., partner at McDonnell Boehnen Hulbert & Berghoff LLP, focuses on patent prosecution, litigation, counseling, and licensing. Dr. Zuhn represents a variety of clients, including biotechnology and pharmaceutical companies both large and small, and universities. He is the founder and editor of the Patent Docs weblog (http://www.patentdocs.org/), a site that covers developments in biotechnology and pharmaceutical patent law.
Courtenay C. Brinckerhoff, is a partner at Foley & Lardner LLP, where she is vice-chair of the Chemical, Biotechnology & Pharmaceutical Practice and a member of the firm's Appellate Practice. Ms. Brinckerhoff focuses on client counseling in all aspects of obtaining, licensing and enforcing patents and conducting freedom-to-operate and due diligence investigations. She has represented clients before the U.S. Patent Office, the U.S. Patent Office Board of Appeals and Interferences, and the U.S. Court of Appeals for the Federal Circuit. Ms. Brinckerhoff works with clients in diverse industries, including pharmaceuticals (chemical and biotechnological), human and animal food products, nutraceuticals, and medical devices. She is the editor and main author of PharmaPatentsBlog.com.
Chris Holman, Ph.D., is Associate Professor of Law at the University of Missouri--Kansas City School of Law. Dr. Holman focuses his research at the intersection of intellectual property and biotechnology, and he has taught classes in patent law; intellectual property; food, drug and biotechnology law; antitrust and competition law; and drug and medical technology torts and property. Previously he served as vice-president of intellectual property and patent counsel at several Silicon Valley biotechnology companies, and worked as an associate at a major intellectual property law firm.