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February 06, 2014


I am struck by the quote "Nevertheless, the Federal Circuit found that Sun's argument was 'surprisingly similar' to the other parties' position on enablement."

I had thought that the Ariad case had dispelled the notion that possession and enablement could be viewed by a reviewing court as 'surprisingly similar.' And yet, it appears that the new standard of Ariad was not applied here.


Nice write up and astute about the importance of the standard of review: it can often make (or break) your case. Sadly, too many attorneys forget that when they do appeals.

Dear Skeptical,

To clarify, it wasn’t the standard that the Court found “surprisingly similar,” it was the argument that Sun was making. From what I could tell, they were alleging that the application did not sufficiently described claim 2 because the inventors didn’t show that they could make the pure enantiomer. I believe that the court applied the correct standard. Thanks for pointing that out.


Thanks Eric. During oral argument, both sides got some tough questions. Based on that questioning, and the criticism found throughout the opinion about a lack of evidence, it really seemed like Pfizer was saved by the standard of review. Thanks again, as always, for the comment.


"In other words, the Federal Circuit appears to be saying that to satisfy the enablement requirement, one need not enable the entire scope of genus claim. This is at least true if the methods of generating the full scope are well known in the art."

-Interesting interpretation of the enablement requirement; however, I disagree. My understanding is that the full scope of a genus claim must be enabled, otherwise there would be a scope of enablement issue. Of course, prior art teachings and the level of a PHOSITA, among other Wands factors, are considered when determining enablement, but never should a claim be found to satisfy the enablement requirement when it does not enable the full scope.



Thanks for the reply.

However, I was not referring to a standard in my comment drawing the close comparison, but rather I was drawing the comparison directly between the requirements themselves.

I reference the Ariad decision because it was that decision that most clearly stated that enablement and possession are two different and distinct requirements.

The court here by saying "surprisingly similar" appears to not be applying the law correctly per the Ariad decision.


You're most welcome. I still remember an AIPLA presentation from many years ago, and good one, on how to appeal/argue before the Federal Circuit. It stressed understanding what issues are questions of law, what issues are questions of fact, and what issues were matters of the discretion: he clearly said/implied avoiding the last type issue if at all possible because the standard of review on appeal was so high and difficult to meet.

Even if the claim-2 is invalid and not infringed the compound pregabalin would be infringed under claim-1. If so, what is the point of trying to invalind claim-2 of '819 patent.

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