Monday, January 25, 2010

Claiming Analogs Unknown to Inventors Renders Patents Invalid for Lack of Written Description and Enablement

The court granted plaintiff's motion for summary judgment of invalidity for lack of written description as to claim elements directed to "macrocyclic lactone analogs" of rapamycin. "Besides the requirement that the compounds be 'structur[ally] similar' to rapamycin, the [asserted patents'] specification provides no further guidance regarding the claimed analogs. . . . The parties do not genuinely dispute that, at the time of the inventions, a small number of such analogs were known, but many more existed. . . . It follows that, if the complete universe of 'macrocyclic lactone analogs' of rapamycin were unknown to the inventors, it could not have been adequately described (or enabled) by a specification that does not even attempt to discuss the term."

Boston Scientific Corporation et al. v. Johnson & Johnson Inc. et al., 1-07-cv-00765 (DED January 20, 2010, Memorandum Opinion) (Robinson, J.)

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