“Inherent Disclosure” in Priority Document is Sufficient to Satisfy Written Description Requirement

Yeda Research v. Abbott (Fed. Cir. 2016)

Abbott’s patent broadly covers Tumor Necrosis Factor α binding protein (TBP-II). U.S. Patent No. 5,344,915.  The U.S. application was filed in 1990, but claims priority to two German applications filed in 1989. A would-be anticipatory prior art reference (Engelmann) was published after the priority applications but before the U.S. application – and the parties have agreed that dispute turns on whether the claims get to rely upon the early priority date.

In the preceding interference proceeding, the Board sided with Abbott as did the district court – finding that one of the German applications sufficiently disclosed the invention.  (Yeda’s application was filed nine days after Abbott’s.)

A priority filing is only effective if the claimed invention was sufficiently described in the original filing.  This implementation of the written description requirement requires the invention “be disclosed in a way that clearly allows a person of ordinary skill to recognize that the inventor invented what is claimed and possessed the claimed subject matter at the date of filing.” Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).  In the priority context, failure of written description does not directly invalidate the claims but instead effectively negates the priority claim.  Here, that date is critical because of the intervening prior art.

 

Abbott’s Claim 1 is directed to the binding protein with “a molecular weight of about 42,000 daltons” and that has at “the N-terminus the amino acid sequence Xaa Thr Pro Tyr Ala Pro Glu Pro Gly Set Thr Cys Arg Leu Arg Glu . . . .”  The problem though is that neither of Abbott’s priority filings expressly disclose the claimed N-terminus sequence.

Abbott was able to overcome the lack of express disclosure with an “inherent disclosure”:

Under the doctrine of inherent disclosure, when a specification describes an invention that has certain undisclosed yet inherent properties, that specification serves as adequate written description to support a subsequent patent application that explicitly recites the invention’s inherent properties.

Slip Opinion at 6 (citing Kennecott).

Here, the priority document described how to make TBP-II, but did not identify the actual sequence as claimed.  On appeal, the Federal Circuit ruled that the original disclosure “inherently discloses the remaining amino acids in the N-terminus sequence” and therefore “serves as adequate written description support for the patent claiming TBP-II.”