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« Ariad v. Lilly: Oral Argument - Updated | Main | NPR's "Science Friday" to Focus on Gene Patenting »

December 10, 2009

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Don,

After mulling over the first paragraph of 35 USC 112, the briefs (and suffering some "gray matter meltdown"), it has dawned on me that what we really have in the first paragraph is two branches of "written description": (1) an "invention description" requirement (i.e., describe what the invention is); and (2) a "make and use description" requirement (which we've traditionally called the "enablement" requirement, but which is actually describe "how to make and use the invention described" requirement. In other words, the portion of the first paragraph which says "the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same" should read together. Even under this view of the first paragraph, you still have a separate and distinct "invention description" requirement which favors Lilly's position, not Ariad's.

"Lilly's "written description" arguments are aimed at denying patent protection to upstream researchers who discover and disclose generally applicable methods that Lilly would then subsequently exploit."

Ok Dabney, Duffy, Whealan, so what? Could you underscore what your point is when you state this? Is your point that patents should be available to someone who "invents" a "generally applicable method" (are we going so far as to imply abstract?!?!? Heavens above, please say no) but does not invent the "specifically applicable method"?

I'm going to be 100% honest with you Whealan et al. I don't think so bucko.

However, I do find that the reply brief is much more in line with what they should be arguing. But they go down the "new" rabbit hole of "the inventor's contribution". Ridiculous. It is as if they want to start a whole new branch of patent law. Next up we may as well add a new stat class "product composition apparatus process or CONTRIBUTION". W t f? They seem to believe that whatever is enabled by the prior art in conjunction with their application is fair game. At least that is more reasonable than the people who think that anything that was enabled by the prior art and where their app had nothing to do with it is fair game.

Even so, this is simply too far fetched. You invented what was in your original app, nothing more, nothing less. You'll later be limited to the claims as what your invention actually is. That's just how it is.

They would do better to limit their arguments to their specific methods/products instead of broadly trying to characerize them as a "contribution" over the art.

Finally, I find it hard to believe that anyone would bring up the telephone cases in pleasant conversation. If there was a line of cases that pointed more clearly to shinanigans in the patent system I've not seen it. Watching the court shrug them off was hilarious.

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