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« News from Abroad: UK Court of Appeal Rules on Interim Injunctions | Main | Ultramercial, Inc. v. Hulu, LLC (Fed. Cir. 2013) »

June 26, 2013

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Comments

Andrew,

The patent claimed a method for treating or preventing restenosis based on a large class of compounds (rapacymin) but described only one such compound (sirolimus) in that broad class. The non-enablement ruling here is a "no brainer," on par with the University of Rochester case involving Celebrex.

Dear EG,

Thank you for the comment. This case doesn’t exactly fall within the University of Rochester case, because in that case no compounds were disclosed that could be used in the claimed method. In the present case, the patentees did disclose rapamycin – but no other derivatives. Also, the Rochester case was a written description case, not an enablement case. Nevertheless, the result in the present case is almost identical to the result in the Boston Scientific v. Johnson & Johnson Federal circuit case from 2011. Even though that case involved different patents with different inventors, the scope of the rapamycin claims were basically the same. Interestingly, the previous panel decided that case as not satisfying the written description requirement, but Judge Gajarsa concurred-in-part because he thought it should have been decided as an enablement case. Apparently he eventually convinced the other two judges, because the other judges on that panel (Moore and Bryson) were also on the present panel. Thanks again.


Andrew

Andrew,

Actually, there is at least a suggestion in the University of Rochester case that the patentee did disclose one, but only one, compound that would work in the claimed method. But yes, the invalidity ruling was based on lack of WD, but could as easily have been based on lack of enablement.

I don't understand why this is an enablement opinion, rather than a written description opinion al la Boston Scientific Corp. v. Johnson & Johnson (Fed. Cir. 2011). However, I admit I have not read the opinion.

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