tag:blogger.com,1999:blog-2774042125883658.post8965713777562497531..comments2024-03-28T08:11:28.651-05:00Comments on Holman's Biotech IP Blog: Ariad v. Eli Lilly: Pragmatism Prevails over Coherent Patent DoctrineChris Holmanhttp://www.blogger.com/profile/13743481878076443159noreply@blogger.comBlogger7125tag:blogger.com,1999:blog-2774042125883658.post-2366771219351921152015-03-03T23:44:13.917-06:002015-03-03T23:44:13.917-06:00Great post. I was checking constantly this blog an...Great post. I was checking constantly this blog and I am impressed! Extremely helpful information particularly the ultimate section : ) I take care of such info much. I was looking for this particular info for a very lengthy time. Thanks and good luck.<br />Desain Ruang Tamu Ala Koreahttp://catclinton.tumblr.com/post/110899779018/desain-ruang-tamu-ala-koreanoreply@blogger.comtag:blogger.com,1999:blog-2774042125883658.post-89004415468193219912011-10-29T03:29:15.794-05:002011-10-29T03:29:15.794-05:00Thanks for the article, very helpful information.Thanks for the article, very helpful information.un sex shophttp://tienda-erotica.jimdo.comnoreply@blogger.comtag:blogger.com,1999:blog-2774042125883658.post-65555317099435580482010-04-01T08:59:16.132-05:002010-04-01T08:59:16.132-05:00This last comment brings up a very good point, i.e...This last comment brings up a very good point, i.e., since Ariad's claims would arguably cover the use of prior art drugs which acts through the NF-kB pathway, and even drinking red wine and moving from the sun into the shade will affect NF-kB, why wasn't the Ariad claim invalidated for inherent anticipation? Eli Lilly raised this argument, but as I recall the District Court excluded much of the evidence based on a theory that it was hearsay. This is a fascinating aspect of the case which I haven't seen discussed elsewhere. I have not looked at the district court decision for a while, but it struck me that the District Court ruling seem to imply that scientific articles would not be available to invalidate a patent because they are hearsay. In any event, I think part of the expiration for why the claims were not invalidated for in anticipation is because Eli Lilly was prevented from entering much of the evidence at the district court level.Chris Holmanhttps://www.blogger.com/profile/13743481878076443159noreply@blogger.comtag:blogger.com,1999:blog-2774042125883658.post-20662411775912563922010-03-29T01:51:54.428-05:002010-03-29T01:51:54.428-05:00I've been a biotech practitioner since there w...I've been a biotech practitioner since there were steam-powered PCRs, but I have to admit that I don't understand this case... if the Ariad patent was valid and infringed, then it would have been infringed by the prior ingestion of compounds which pre-dated it-- the Lilly compounds acted by the same pathway then as they do today. Yes, the Court had to invalidate the Ariad patents, but why by this route? I was hoping this fact pattern would give us some new insights on inherency.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-2774042125883658.post-33677500488018892922010-03-27T16:44:22.848-05:002010-03-27T16:44:22.848-05:00I've practiced patent law for several decades,...I've practiced patent law for several decades, involving complex chemical and sometimes biochemical issues. In my opinion this case undermines clearly established precedent and will generate significant confusion in the Patent Office and in the Courts.<br /><br />All issues of chemistry and biotechnology aside, the problem here is the holding that an originally filed claim is invalid for failure to meet <i>the description requirement</i> of 35 USC § 112, and the implications of that holding.<br /><br />The crux of the holding and the inherent confusion as to the meaning and implications of the holding are found in the Court's statement:<br /><br /><i>Furthermore, while it is true that original claims are part of the original specification, In re Gardner, 480 F.2d 879, 879 (CCPA 1973), that truism fails to address the question whether original claim language necessarily discloses the subject matter that it claims."</i><br /><br />As acknowledged by the Court, original patent claims are uniformly recognized as a portion of the original specification. Although not expressly stated by the Court, it necessarily follows, and has long been recognized by the courts, that original patent claims also constitute a portion of the <i>original disclosure</i> of the invention. <br /><br />Hence, the "question" raised in the above cited quotation can be rephrased as <i>... the question whether <b>the disclosure of subject matter via an original claim</b> necessarily discloses the subject matter of the claim</i>.<br /><br />But that "question" is not a question at all. By any application of logic the disclosure of the patent claim must be seen as disclosing the subject matter of the claim.<br /><br />I do agree with the Court that there are separate <i>description</i> and <i>enablement</i> requirements in 35 USC § 112. I've addressed the issue numerous (probably hundreds) times over the years. Basically, one can see the description requirement as a prohibition against filing a patent specification disclosing one or more new principles of science and later adding patent claims directed to new applications of the scientific principle(s) to specific problems, not originally disclosed in the patent application.<br /><br />This issue has a converse side often seen in rejections in the PTO, and invalidity positions urged in the courts; namely, that mere disclosure of a principle of science by the prior art renders obvious all practical applications of the scientific principle, on the basis that any such application of the scientific principle is "within the skill of the art". In general, this is not a proper basis for for a determination of unpatentability or a holding of invalidity.<br /><br />But by the same token, mere disclosures of new principles of science do not properly constitute sufficient disclosure to support new patent claims directed to undisclosed applications of the scientific principles to specific problems.<br /><br />The problem is the current case is that the Court does not distinguish between disclosure and enablement as a basis for unpatentability. The scope of a patent claim can be fully supported by the <i>disclosure</i> of the patent application, yet not be patentable on the basis that the original specification (which includes the original claims by the way) does not reasonably <i>enable</i> practice of the full scope of the claimed subject matter.<br /><br />One might reconcile this case on the basis that the Court was dealing with claims directed to <i>ambiguous</i> generic subject matter. However the proper basis for determining invalidity in that case would be <i>indefiniteness</i> as per the second paragraph of Section 112...<br /><br />__Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-2774042125883658.post-32052211772446624352010-03-24T09:53:14.038-05:002010-03-24T09:53:14.038-05:00Yes, great analysis--thanks very much. I had not ...Yes, great analysis--thanks very much. I had not read any of the briefs, but was mystified by the use of written description rather than enablement to knock out these claims; now I get it.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-2774042125883658.post-56273038514435562512010-03-23T12:10:20.020-05:002010-03-23T12:10:20.020-05:00great analysis, as always Chris@great analysis, as always Chris@Kyle Jensenhttps://www.blogger.com/profile/13572842867915408556noreply@blogger.com