Decisions in Patent Cases Including Issue of Separate Written Description Requirement - Intellectual Property Law - Federal Circuit
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Decisions in Patent Cases Including Issue of Separate Written Description Requirement

The Federal Circuit decided two patent cases today, one involving whether a preamble statement of purpose limits the scope of the patentee's claims, and the other involving Federal Circuit's controversial holding that section 112, first paragraph, contains a written description requirement separate from enablement.

In Marrin v. Griffin, No. 09-1031, the Federal Circuit faced a challenge to the district court's grant of summary judgment finding plaintiff's '448 patent, related to a scratch-off label to mark beverage containers and cups, invalid as anticipated, claiming that the district court erred in treating the "for permitting" language in the preamble as a claim limitation.

As stated in the decision: "Clear reliance on a preamble during prosecution can distinguish a claimed invention from the prior art and render the preamble a claim limitation...but there was no such reliance here.  The prosecution history establishes that the Griffins did not consider the writing use for their claimed invention as being patenably significant."

Thus, in affirming the district court's finding that the patent was invalid for anticipation, the court held that the preamble's statement of purpose does not limit the scope of the claims.

In Ariad Pharm., Inc. v. Eli Lilly & Co., No. 08-1248, the court faced a challenge to its interpretation of 35 U.S.C. section 112, first paragraph, as containing a separate written description requirement in an en banc hearing in the patent infringement action involving a patent relating to the regulation of gene expression by the transcription factor NF-kB. 

Following the plaintiffs' petition, the court vacated the prior panel opinion and directed the parties to brief two questions: (1) Whether 35 U.S.C. section 112, paragraph 1, contains a written description requirement separate from an enablement requirement?; and (2) if a separate written description requirement is set forth in the statute, what is the scope and purpose of that requirement?"

The court held that section 112, first paragraph, contains two separate description requirements:  a written description of the invention and of the manner and process of making and using the invention.  Thus, in reversing the district court's decision in part, the court held that the asserted claims of plaintiff's '516 patent invalid for lack of written description.

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