Federal Circuit Issues Significant Biotech Decisions

    By Donald Zuhn --

This morning, the Federal Circuit issued decisions in both In re Kubin and Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co.  In Kubin, the Federal Circuit, with Circuit Judge Rader writing for Circuit Judges Friedman and Linn, affirmed the Board's decision that Kubin's claims were obvious.  In Ariad Pharmaceuticals, the Federal Circuit, with Circuit Judge Moore writing for Circuit Judge Linn and Circuit Judge Linn writing a concurring opinion, reversed-in-part, holding the asserted claims of Ariad's U.S. Patent No. 6,410,516 invalid for lack of written description, and affirmed-in-part, holding that the asserted patent was not unenforceable due to inequitable conduct.  Patent Docs will provide comprehensive commentary regarding these two decisions in subsequent posts.

Comments

[EG]

Don,

In the Kubin case, even Judge Rader is now running scared from SCOTUS. His treatment of the continuing validity of Deuel is puzzling as SCOTUS said in KSR (as was quoted in the opinion) that "the fact a combination was obvious to try might show that it was obvious under [section] 103." SCOTUS didn't say "would show it was obvious" but you would never believe that after this Kubin decision. If ever there was a case for an en banc hearing, this is one as this panel has, in essence, negated the previously Deuel precedent. I can just see Judge Newman going ballistic over this one (she's the only judge on the Federal Circuit not running scared from SCOTUS).

[CNS]

Biotech patents, R.I.P. If not overturned en banc or by the SCOTUS, this decision just killed, or at the very least cast a dark shadow on, virtually every single genetic material-based patent granted post-Deuel. Even if some patents survive based on some theory of unpredictability in cloning etc., have fun spending $$$s on expert witness/litigation/etc. to get to that point. Given the current state of the biotechnological arts, it's hard to imagine any isolated genetic material being patentable now. I'm taking my ball and going home ....

[CNS]

I propose that David Baltimore go ahead and mail his Nobel Prize to Judge Moore, given her clearly superior knowledge and understanding of NF-kB regulation.