Federal Circuit's En Banc Review of Written Description Requirement Does Not Constitute "Intervening Change" or Alter "Existing Standards"

The court denied in part plaintiff's motion for judgment as a matter of law of no invalidity for lack of written description on the basis that "35 U.S.C. § 112, paragraph 1 . . . does not contain a written description requirement separate from an enablement requirement." In a pre-verdict motion for JMOL, plaintiff argued that defendant's evidence failed to establish a lack of written description, but plaintiff did not argue that the written description defense lacked merit because "§ 112 does not contain a written description requirement." Moreover, an expected en banc decision by the Federal Circuit did not constitute an "intervening change in the law" such that the failure to raise such argument was justified. "It is the court’s opinion that an expectation of change does not constitute an intervening change. . . . The court recognizes that the Federal Circuit has heard oral argument in [Ariad Pharms., Inc. v. Eli Lilly & Co., Fed. Cir., No. 2008-1248 ] and that the Federal Circuit’s forthcoming decision in that case may alter the scope and purpose of the written description requirement. However, this court. . . is constrained to follow existing standards under Federal Circuit law, and Federal Circuit precedent 'clearly recognizes a separate written description requirement.'"

Cordance Corporation v. Amazon.com Inc., 1-06-cv-00491 (DED February 22, 2010, Memorandum Opinion) (Thynge, M.J.)