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June 15, 2022

Comments

"The District Court considered the issue to be whether the genus of UDP-glucosyltransferases was defined (and described) structurally or functionally and, deciding it was the latter, found that the claims did not provide adequate written description support."

I wonder if the patentee could have avoided this outcome by arguing---under Williamson v. Citrix---that the recitation "UDP-glycosyltransferase" should be given a 112(f) construction because it recites a function without reciting structure sufficient to accomplish that function. If, so then the claim term would have been properly construed to read on the four disclosed UGTs (UGT76G1, UGT91D2, UGT91D2e, & UGT91D11) and equivalents. Presumably the defendant is using one of those four, so such a construction should still have been enough to establish infringement.

I suppose the Patentee’s fear would be that such a stratagem would provide a roadmap for designing around, so any victory would be phyrric and thus ultimately not worth pursuing.

Thanks for the comment

To be sure, that is a possibility. Of course, such a construction only opens the door to a design-around if it turns out that there is a set of known enzymes that: (1) are not among the disclosed species; (2) are not function-way-result "equivalents" of the disclosed four; and (3) nevertheless function as well or better than the disclosed four. That is a fact question whose answer I do not know.

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