En Banc Federal Circuit Reaffirms the Separate Written Description Requirement

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On March 22, the Federal Circuit issued its en banc decision in Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co. In a 9-2 decision written by Judge Lourie, the majority reaffirmed that the written description requirement of patentability is separate from the enablement requirement. Thus, a patent must explain in sufficient detail what the claimed invention is, as well as how to make and use—or “enable”—it. As a result of the Federal Circuit’s opinion, the written description requirement remains an important defense on which to challenge some patent claims, especially those written functionally to cover all things that work or those that describe only the problem to be solved while claiming all solutions to it.

In answering the first of the questions it had put to the parties—does § 112 of the patent statute contain a written description requirement separate from enablement — the Federal Circuit looked to statutory construction, Supreme Court precedent, and its own earlier decisions, as well as those of its predecessor court, the Court of Customs and Patent Appeals, over the past 40 years, to reaffirm that § 112 has a separate written description requirement for patentability. The Federal Circuit further stated that the requirement applies both in the context of determining the priority of added claims as well as to the original claims themselves. Indeed, the majority opined that any change in this long-standing law would be contrary to sound policy and reason and that such change should be left to Congress.

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