Ariad v. Lilly: Oral Argument - Addendum

    By Kevin E. Noonan --

At the outset of the en banc oral argument in Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co. last week, Chief Judge Michel asked Lilly's counsel whether Lilly had preserved the written description issue by timely objecting to District Court Judge Zobel's jury instruction (see "Ariad v. Lilly: Oral Argument").  This question was curious:  perhaps Judge Michel (at right) wanted to be certain that the question was properly before the Court; perhaps he wanted to ascertain whether there was a simple answer to the complex question the Court had posed to the parties and amici; perhaps he wanted to avoid having the en banc Court make a definitive statement on the existence and scope of the written description requirement and invite Supreme Court review (a petition for certiorari is almost certain no matter how the Federal Circuit rules).

Charles E. Lipsey, Lilly's counsel, responded to the Court by pointing to a particular part of the record (specifically, A172-173), and promised the Court that Lilly would provide "additional information" on the question.  That information has taken the form of a letter from Lilly's counsel to the Court, outlining how the jury instructions were proposed by the parties and adopted by the District Court during the patent infringement lawsuit, and the steps Lilly took to preserve the issue for appeal.

The letter (which contains copious citation to the record) is signed by co-counsel Howard W. Levine, and relates that both parties submitted written jury instructions to the District Court, and that there was a charge conference on April 26, 2007.  However, at the charge conference, Judge Zobel informed the parties that "she had not determined how to phrase the parties' written description instructions in her 'own language' and needed additional time."  She also informed the parties that they would not have the opportunity to review the instruction before she charged the jury, but would be able to make their objections after she had charged the jury.  Mr. Levine states in his letter to the Court that Lilly timely objected to the instruction "at a sidebar conference" after the jury was charged (citing A172-173, the portion of the record cited at oral argument by Mr. Lipsey).

This objection "preserved the issue for appeal" according to Mr. Levine, citing Fed. R. Civ. P. 51(c)(2)(B) and Suprenant v. Rivas, 424 F.3d 5, 15 (1st Cir. 2005).   In addition, Mr. Levine confirmed for the Court that Lilly raised the written description jury instruction in its motion for a new trial (A2774) and in pre- and post-verdict motions for judgment on the written description issue.

Finally, the letter reminds the Court that Ariad did not argue that Lilly had not preserved the issue for appeal.

After all the effort expended by the parties, amici, and the Court in bringing this issue to the brink of an en banc decision, it is comforting to know that the entire enterprise won't be derailed on procedural grounds.

For additional information regarding this topic, please see:
• "Ariad v. Lilly: Ariad's Reply Brief," December 10, 2009
• "Ariad v. Lilly: Oral Argument," December 9, 2009
• "Amicus Briefs in Ariad v. Lilly: Regents of University of California et al.," December 6, 2009
• "Amicus Briefs in Ariad v. Lilly: Briefs by Companies," December 6, 2009
• "Amicus Briefs in Ariad v. Lilly: American Intellectual Property Law Association," December 1, 2009
• "Amicus Briefs in Ariad v. Lilly: Federal Circuit Bar Association," November 29, 2009
• "Amicus Briefs in Ariad v. Lilly: Intellectual Property Owners Association," November 25, 2009
• "Amicus Briefs in Ariad v. Lilly: GlaxoSmithKline," November 24, 2009
• "Amicus Briefs in Ariad v. Lilly: United States," November 23, 2009
• "Amicus Briefs in Ariad v. Lilly: Google, Verzion Communications Inc. and Cisco Systems, Inc.," November 22, 2009
• "Amicus Briefs in Ariad v. Lilly: Professor Christopher Holman," November 19, 2009
• "Lilly Files Principal Brief for Ariad v. Lilly Rehearing En Banc," November 16, 2009
• "Next Up: Ariad v. Lilly Rehearing En Banc," November 10, 2009
• "Federal Circuit Grants En Banc Review in Ariad v. Lilly," August 21, 2009
• "Ariad Files Petition for Rhearing in Ariad v. Lilly," June 3, 2009
• "Ariad Decision Voids Attempt to Use Broad Claiming to Avoid the Written Description Requirement," April 14, 2009
• "Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co. (Fed. Cir. 2009)," April 6, 2009

Comments

[EG]

Kevin,

At an en banc oral argument, I find it very strange that Michel would focus on such minutia as whether Eli Lilly had preserved their right to object to a jury instruction. There were far more important matters that needed to be addressed. And as you correctly pointed out, everyone tip toed around the most importantly, namely what's required to satisfy "written description," be it separate and distinct, or otherwise

[Noise above Law]

EG,

Be "written description" not separate and distinct, the plain language of the statute tells you the level to be satisfied.

It is only when "written description" is made separate and distinct does the plain language of the statute not tell you the level.

I have found it rather surprising that the court as well as the pundits have not picked up on the discussion of the second question.