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« Cornell Research Foundation, Inc. v. Vidal (Fed. Cir. 2022) | Main | European Biotech Patent Law Webinar »

June 21, 2022


The lesson that could be drawn here is that expert testimony as to what a patent specification says, or not, may win initially, but if that is not what the specification itself actually says per a more objective reading by a Fed. Cir. majority, you risk get reversed. The surprise here was a Fed. Cir. rehearing request effective enough to get an original Fed. Cir. decision reversed.

Could one argue that fact-finding deference on appeal is not quite the same re the intrinsic evidence of the specification itself, in view of Markman?

Thanks, Paul - good point. Perhaps Markman has made fact deference limited to questions like infringement (i.e., the application of the court-construed claims to the accused article) and any question relating to claim scope becomes one of construction. The problem with that calculus is that invalidity for not satisfying Section 112 should be determined after construction, no? But thanks for bringing this up

Kevin, If I see it right (from my viewpoint out of the jurisdiction) when one reads the specification to discern its WD, it is not good enough to conclude that any particular "disclosure" is "obvious" from the text and drawings. Isn't it awfully hard for a DC judge to distinguish what disclosure the expert witnesses are saying is "obvious" from the specification (and so is not within the WD) from what is "implicit" in the specification (and therefore within its WD)? How many DC judges (never mind jury members) are able to do that, reliably, competently and accurately?

“ Isn't it awfully hard for a DC judge to distinguish what disclosure the expert witnesses are saying is ‘obvious’ from the specification (and so is not within the WD) from what is ‘implicit’ in the specification…”

This is—literally—the exact same question that a court must resolve when adjudicating a dispute about inherent anticipation. I do not mean to say that it is easy, but making this determination is just part of the job that an adjudicator must do in a rule-of-law patent system like ours or yours.

Quite so, Greg, with the proviso that (as Paul Morgan reminds us on another blog) Judge Moore writes in her footnote that when Novartis invokes the concept of "implicit disclosure" she has no idea what "implicit" means.

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