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IP LitigationFederal Circuit

Written description requirement met for purposes of maintaining interference where at least one embodiment meets claim construction

May 27, 2014

IP LitigationFederal Circuit

Written description requirement met for purposes of maintaining interference where at least one embodiment meets claim construction

May 27, 2014

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Federal Circuit affirms claim construction of the phrase “administered locally,” but reverses dismissal of an interference for lack of written description support.

Tobinick v. Olmarker, ___ F.3d___ (Fed. Cir. May 19, 2014) (Lourie, REYNA, Wallach) (P.T.A.B.) (2 of 5 stars)

For patents on drugs to treat spinal nerve injuries by administering monoclonal antibodies to inhibit TNF-α (an inflammation signaler), the Board correctly construed “administered locally” to mean administering the drug “directly to the site where it is intended to act, that is, to the location where the nucleus pulposus is causing the symptoms of the nerve disorder,” without excluding administration “adjacent to disc herniation.”  Slip op. at 8.

Olmarker argued that the Tobinick patent application did not adequately describe local administration because it mixed local administration techniques with non-local techniques.  While the application disclosed that “perispinal” administration covered more than just local administration techniques, the Fed Cir reasoned that this did not render all perispinal techniques non-local.  It noted that the patentee is only required to show that at least one embodiment meets the Board’s construction of “administered locally.”

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