The USPTO is now publishing comments
The USPTO is now publishing comments
The recent decision in Abbvie Deutschland v. Janssen Biotech and Centorcor Biologics, App. No. 2013-1338, -1346 (Fed. Cir. , July 1, 2014) deserves more attention than it has received. (A copy of the decision is available at the end of this post.) The appeal was by Abbvie from a District Court decision entering a judgment of invalidity of Abbvie’s patents on fully humanized antibodies (Abs) to IL-12. Although Abbvie won an interference involving its U.S. Patent No. 6,914,128, a jury found both patents invalid inter alia as failing the written description requirement (“WDR”) of s.112, para. 1.
The “modern” WDR as created in UC v. Lilly and applied in decisions such as U. of Rochester v. Searle and Ariad v. Lilly has been a potent patent-killer, particularly when functional claims are asserted. That is just what Abbvie attempted, e.g.:
Claim 29. A neutralizing isolated human antibody…that binds to human IL-12 and disassociates from human IL-12 with a koff rate constant of 1×10(-2)s(-1) or less, as determined by surface plasmon resonance. See slip. op p.7.
Guest post from Brad Forrest, Shareholder at Schwegman Lundberg & Woessner, P.A.
Passing on the opportunity to provide a usable test to determine what is an “abstract idea,” the Supreme court simply compared the idea underlying the claims in Alice v. CLS Bank to those in Bilski and said they both are directed to abstract ideas implemented by a general purpose computer: “In any event, we need not labor to delimit the precise contours of the “abstract ideas” category in this case. It is enough to recognize that there is no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement at issue here. Both are squarely within the realm of “abstract ideas” as we have used that term.”
At least on the bright side, no further damage to subject matter eligibility appears to have been done by the decision. It just appears to be a repeat of Bilski at first glance.
Before stepping down as Chief Judge of the Fed. Cir. on May 30th, Judge Rader had sent a letter to his colleagues on the court apologizing for sending an email to an attorney who had appeared before the court a number of times, praising his work and encouraging him to circulate the email to his associates. (A copy of the letter is available at the end of this post.) The letter was dated May 23, 2014, and was clear about the error of his ways:
“I realize in retrospect that the email constituted a breach of the ethical obligation not to lend the prestige of the judicial office to advance the private interests of others. I apologize for that error, which may have led to the perception that the attorney in question was in a position to influence me in my performance of judicial duties….Working with the court, I have taken steps to remedy the breaches for which I was responsible by recusing in cases as to which a question might be raised as to my impartiality. I am committed to adhering carefully to the requirements of the Code of Conduct for United States judges in making any necessary recusal decisions. I am truly sorry for the lapse and will work diligently to ensure that it does not recur….”
The commentary presented herein represents the opinions of the author and not of Schwegman Lundberg & Woessner, P.A. or any other employee thereof. This commentary is provided for general informational and discussion purposes and should not be considered to be, or used as, legal advice to address any particular situation.
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