Allergan, Inc. v. Photomedex, Inc., et. al., 8-07-cv-01316 (CACD February 28, 2013, Order) (Selna, J.).
Friday, March 8, 2013
Claim Encompassing Ten Sextillion Compounds Not Invalid for Lack of Enablement
The court denied defendants' motion for summary judgment that plaintiff's hair growth patent, which encompassed over ten sextillion compounds, was invalid for lack of enablement. "[T]he fact that the claims cover a 'broad genus of compounds' is not, in itself, sufficient to hold that a patent is not enabled. . . . Further, although [defendant] repeatedly argues that any testing would require extensive time and money despite unpredictable results, neither the time nor money that may be required to complete testing necessitates a finding of undue experimentation. . . . The [patent-in-suit's] specification teaches the use of at least some of the compounds, describes several compositions in different forms that are made up of at least some of the claimed compounds, and describes methods for administration to a mammal, including details on dosage. Such factors recently justified a finding of validity in a case involving the validity of a prior art . . . which disclosed an even broader genus of compounds than those claimed in the [patent-in-suit]."