BIOMERIEUX et al.

14 Cited authorities

Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co.
598 F.3d 1336 (Fed. Cir. 2010) Cited 619 times 79 Legal Analyses
Holding that our written description requirement requires that a specification “reasonably convey to those skilled in the art” that the inventor “actually invented” and “had possession of the claimed subject matter as of the filing date [of the invention]”
Regents of the Univ. of Cal. v. Lilly & Co.
119 F.3d 1559 (Fed. Cir. 1997) Cited 333 times 17 Legal Analyses
Holding that written description requires more than a "mere wish or plan for obtaining the claimed chemical invention"
Vas-Cath Inc. v. Mahurkar
935 F.2d 1555 (Fed. Cir. 1991) Cited 397 times 3 Legal Analyses
Holding construction of § 112, ¶ 1 requires separate written description and enablement requirements
Abbvie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc.
759 F.3d 1285 (Fed. Cir. 2014) Cited 107 times 16 Legal Analyses
Upholding jury verdict of invalidity for lack of adequate written description because the pharmaceutical patents did not describe representative examples “to support the full scope of the claims”
University, Rochester v. G.D. Searle Co.
358 F.3d 916 (Fed. Cir. 2004) Cited 140 times 7 Legal Analyses
Holding the patent invalid because "Rochester did not present any evidence that the ordinarily skilled artisan would be able to identify any compound based on [the specification's] vague functional description"
Enzo Biochem, Inc. v. Gen-Probe Inc.
323 F.3d 956 (Fed. Cir. 2002) Cited 121 times 12 Legal Analyses
Granting petition for rehearing and vacating prior panel decision reported at 285 F.3d 1013 (Fed. Cir. 2002)
Centocor Ortho Biotech v. Abbott Lab
636 F.3d 1341 (Fed. Cir. 2011) Cited 71 times 11 Legal Analyses
Holding claims invalid for inadequate written description and reversing the denial of a post-verdict motion for judgment as a matter of law
Amgen Inc. v. Sanofi, Aventisub LLC
872 F.3d 1367 (Fed. Cir. 2017) Cited 33 times 21 Legal Analyses
Finding that post-priority-date evidence of potentially undue experimentation was relevant to determining enablement
Fiers v. Revel
984 F.2d 1164 (Fed. Cir. 1993) Cited 74 times 7 Legal Analyses
Holding a claim to a genus of DNA molecules not supported by written description of a method for obtaining the molecules
Noelle v. Lederman
355 F.3d 1343 (Fed. Cir. 2004) Cited 33 times 9 Legal Analyses
In Noelle, the applicant claimed a human monoclonal antibody (or fragment thereof) secreted from a particular hybridoma that binds to an antigen expressed on activated T-cells. The application did not, however, disclose any structural information about the human antigen.
Section 112 - Specification
35 U.S.C. § 112 Cited 7,419 times 1069 Legal Analyses
Requiring patent applications to include a "specification" that provides, among other information, a written description of the invention and of the manner and process of making and using it
Section 6 - Patent Trial and Appeal Board
35 U.S.C. § 6 Cited 188 times 63 Legal Analyses
Giving the Director authority to designate "at least 3 members of the Patent Trial and Appeal Board" to review "[e]ach appeal, derivation proceeding, post-grant review, and inter partes review"
Section 134 - Appeal to the Patent Trial and Appeal Board
35 U.S.C. § 134 Cited 99 times 30 Legal Analyses
(a) PATENT APPLICANT.-An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal. (b) PATENT OWNER.-A patent owner in a reexamination may appeal from the final rejection of any claim by the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal. 35 U.S.C. § 134 July 19, 1952, ch. 950, 66 Stat. 801; Pub. L. 98-622
Section 1.142 - Requirement for restriction
37 C.F.R. § 1.142 Cited 25 times 2 Legal Analyses
Discussing requirement for restriction

BIOMERIEUX et al.

14 Cited authorities

Holding that our written description requirement requires that a specification “reasonably convey to those skilled in the art” that the inventor “actually invented” and “had possession of the claimed subject matter as of the filing date [of the invention]”

Holding that written description requires more than a "mere wish or plan for obtaining the claimed chemical invention"

Holding construction of § 112, ¶ 1 requires separate written description and enablement requirements

Upholding jury verdict of invalidity for lack of adequate written description because the pharmaceutical patents did not describe representative examples “to support the full scope of the claims”

Holding the patent invalid because "Rochester did not present any evidence that the ordinarily skilled artisan would be able to identify any compound based on [the specification's] vague functional description"

Granting petition for rehearing and vacating prior panel decision reported at 285 F.3d 1013 (Fed. Cir. 2002)

Holding claims invalid for inadequate written description and reversing the denial of a post-verdict motion for judgment as a matter of law

Finding that post-priority-date evidence of potentially undue experimentation was relevant to determining enablement

Holding a claim to a genus of DNA molecules not supported by written description of a method for obtaining the molecules

In Noelle, the applicant claimed a human monoclonal antibody (or fragment thereof) secreted from a particular hybridoma that binds to an antigen expressed on activated T-cells. The application did not, however, disclose any structural information about the human antigen.

Requiring patent applications to include a "specification" that provides, among other information, a written description of the invention and of the manner and process of making and using it

Giving the Director authority to designate "at least 3 members of the Patent Trial and Appeal Board" to review "[e]ach appeal, derivation proceeding, post-grant review, and inter partes review"

Discussing requirement for restriction