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« Indivior UK Ltd. v. Dr. Reddy's Laboratories S.A. (Fed. Cir. 2021) | Main | BIO IPCC Webinar Series »

December 01, 2021


“This decision, for the first time, may be one where claims that unambiguously have in haec verba support have been found not to satisfy the written description requirement.”

Sort of depends on what one means by “in haec verba.” There is a Monty Python skit where John Cleese pretends to be a Shakespearean actor giving an interview to the BBC. When the interviewer asks what is the most challenging role he has ever played, Cleese answers “I think the answer must be Hamlet… I found the role a very taxing one. I mean, er, Hamlet has eight thousand two hundred and sixty-two words, you see… Othello's a bugger too, mind you…, but he has nine hundred and forty-one words less than Hamlet… But…, I don't want you to get the impression it's just a question of the number of words... um... I mean, getting them in the right order is just as important.”

Yes, “480 mg/day” is recited in haec verba, but *only* in paragraph [0171]. Meanwhile, the nearest mention of “multiple sclerosis” to that dosage occurs in [0159]. There are a variety of drugs mentioned in this disclosure, offered as therapeutics for a variety of diseases at a variety of dosages, but the patentee here picked *one* dosage of *one* drug for treatment of *one* disease, cobbling the claim together from disparate and far-flung parts of the disclosure. It is not, in other words, a quibble about whether the claim language is present in the written description, but whether the words occur *in the right order*.

I have termed this something else.

With the thought experiment of training monkeys in a cage with a firehose:

Place a bunch of bananas dangling from the upper center of the cage with a step ladder underneath, and rip into any monkey climbing the ladder with the firehose - and rip into ALL the monkeys in the cage), and soon, the monkeys are conditioned to turn on any monkey attempting to climb the ladder.

Replace a monkey or two and repeat, and eventually you arrive at a point at which no firehosing at all would be needed.

In shorter terms, the Supreme Court has brow-beaten the CAFC to a point that the CAFC has lost its purpose, and now the CAFC acts just like the anti-patent Supremes.

I understand the point, Greg, but while not optimum the claimed method was in the spec and the majority recognized it (in the section where they say they don’t reach the question but concede the spec teaches treatment of MS with DMF). The only issue was the 480mg/day dose and that’s what seems anomalous to me. I could understand it better if their reasoning was closer to yours, that the disclosure was so disjointed that possession wasn’t clear.

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