UCB sued Yeda for a DJ of non-infringement of US Patent No. 6,090,923 [Appeal No. 2015-1957 (Fed. Cir. September 8, 2016)].The main claim in question was directed to “A monoclonal antibody which specifically binds a human cytotoxin [having X properties].” The specification only disclosed murine Mabs (the priority document was filed in 1984). During prosecution, Yeda had limited the claims to murine Mabs, and then later removed that limitation.
The Examiner rejected that claim as non-enabled as to the different species that were encompassed. Yeda argued that the claim should be read to encompass humanized and chimeric Mabs and put in a declaration that other species could be used to obtain the Mabs. The Examiner withdrew the non-enablement rejection but rejected claims that recited chimeric Mabs as unsupported new matter.