The written description requirement for CIP claims is not satisfied when the original specification failed to demonstrate constructive possession of the invention, and instead merely recited the problem and a claim to all possible solutions.

Centocor Ortho Biotech, Inc. v. Abbott Laboratories, No. 10-1144 (Fed. Cir. Feb. 23, 2011).

The patentee sued for infringement of a patent involving antibodies to human tumor necrosis factor-α involving both a variable region and a constant region for the antibody.  After a jury trial, the alleged infringer moved for judgment as a matter of law on non-infringement and invalidity.  The district court denied the motion for judgment as a matter of law, and the alleged infringer appealed.  The Federal Circuit reversed and held that the patent was invalid for failure to comply with the written description requirement.

The written description requirement is satisfied if the patent applicant conveys “with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention, and demonstrates that by disclosure in the specification of the patent.”  Considered objectively, the four corners of “the specification must describe an invention understandable to [a person of ordinary skill in the art] and show that the inventor actually invented the invention claimed.”  In other words, the specification must demonstrate that the inventors possessed the invention and not merely recite a problem and a claim to all possible solutions. 

In particular, the specification did not describe any antibodies satisfying the claim limitations.  The specification also did not identify any of the characteristics of a fully human antibody or disclose the relationship between a mouse variable region and a human variable region.  Finally, the only expert testimony was that the specification would not disclose to a person of ordinary skill in the art how to make a fully human antibody.  Thus, the patent failed to satisfy the written description requirement, and the patent was invalid.

A copy of the opinion can be found here.

Courts can look to the specification of a patent to determine the meaning of an ambiguous claim term like "asymmetry," where the context of the term is not expressly recited in the claim but is described in the specification.

Hologic, Inc. v. SenoRx, Inc., No. 2010-1235 (Fed. Cir. Feb. 24, 2011).

The district court ruled in favor of the alleged infringer, finding the claims of the asserted patent invalid.  On appeal, the Federal Circuit reversed based on an erroneous claim construction and remanded for further proceedings.

The technology of the asserted patent was directed to a type of radiation therapy for the treatment of cancer where a radiation-containing balloon is inserted in the body near the tumor.  The district court construed the claim term “the radiation source further being asymmetrically located and arranged within the expandable surface to provide predetermined asymmetric isodose curves with respect to the apparatus volume” to require that the radiation source be “located and arranged inside the expandable surface so as not to be concentric with the expandable outer surface.”  The district court rejected the patentee’s proposed construction, which limited the claimed asymmetry to asymmetry about the longitudinal axis of the balloon.  The district court based its construction on the fact the patent specification did not always refer to asymmetry with respect to the longitudinal axis. 

On appeal, the patentee argued that the district court erred by failing to limit the claim terms to situations in which asymmetry is achieved by displacing the radiation source from the longitudinal axis.  The Federal Circuit agreed, finding that while the location of the asymmetry of the radiation sources was not explicitly recited in the claim, asymmetry is a relative concept that must be read in view of the specification.  In particular, the court pointed to the “summary of the invention” and other parts of the specification, and determined that the patentee clearly contemplated that the asymmetry referred to displacement from the longitudinal axis of the balloon. 

A copy of the opinion can be found here.