Novozymes v. Dupont is a recent patent case that discusses if claimed subject matter in a continuation meets the requirements of 35 USC 112 if the continuation’s claimed limitations are not literally recited in the new claims. Specifically, this case discusses who “one of ordinary skilled in the art” based on technology areas.
Plaintiff Novozyme sued DuPont nutrition for infringement of U.S. patent No 7,713,723. The ‘723 patent claims modified enzymes that exhibit improved function and stability. The enzymes facilitate molecular processes that would either not occur or would occur much more slowly if the enzyme was not present.
Initially Novozymes filed provisional patent application No. 60/249,104 on November 16, 2000 related to enhanced stability of seven potential parent enzymes. The 2000 application included thirty-three separate amino acid positions along a chain that Novozymes identified as promising mutation targets using ration protein design or random mutagenesis. The specification further indicated that these sites could be changed. Novozymes filed their first non-provisional patent application claiming priority to the 2000 application in July, elected a single specific amino acid substitution responsive to a restriction requirement, and filed a continuation application on July 29, 2003 electing a second position. Upon learning that DuPont had introduced a thermostable enzyme at position 239, Novozymes filed a new continuation application, which resulted in the ‘732 application. A representative claim for the ‘732 is shown below:
1. An isolated variant of a parent alpha-amylase, wherein:
(a) the variant has at least 90% sequence identity to SEQ ID NO: 6,
(b) the variant comprises a substitution of serine at position 239 relative to the parent alpha-amylase, using the amino acid sequence of SEQ ID NO: 8 for determining position numbering, and
(c) the variant has increased thermostability relative to the parent alpha-amylase, wherein thermostability is determined at pH 4.5, 90° C. and 5 ppm calcium and has alpha-amylase activity.
Regarding the representative claim, Novozymes never particular embodied or pointed out an enzyme at the 239 position among the disclosed options.
The district court concluded that DuPont did infringe the claim of the ‘732 patent and denied Dupont’s motion for summary judgment that the claims did not satisfy the enablement and written description requirements of 35 USC 112. The case went to trial before a jury, which concluded that the ‘732 patent’s claims are valid under 35 USC 112. However, at a post-trial motion, the district court ruled as a matter of law that the ‘732 patent is invalid for failure to satisfy the written description requirement.
The court of appeals upheld the district court’s ruling that the ‘732 patent is invalid for failure to satisfy the written description requirement of 35 USC 112. The court of appeals reasoned that to satisfy 35 USC 112 a patent’s written description must clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed, and a mere wish or plan to obtain the claimed invention is not sufficient. Specifically, the court reasons that a written description that disclosed a broad genus of analogs and made passing reference to alternatives fails to describe or identify any member of the claimed sub-genus of the alternatives. Applying this standard to the present case, the court of appeals stated that the supporting disclosure included seven example, two of which could be shown to meet the claimed ration limitation, but neither the text accompanying the examples emphasize the claimed ratio, thus one of ordinary skill in the art would not be directed to the claimed ratio as an aspect of the invention. In related cases, courts have held that the written description was sufficient because the particular claimed compound had been individually described as one of several possibilities, which was not done in the present case.
PATENT ATTORNEY TAKE-A-WAYS:
1) Always try to include limitations in claims that are literally supported by the specification. By providing literal support for claim limitations from the specification, the written description parameter of 35 USC 112 will most likely be met. This will also be helpful if your application is prosecuted in foreign countries, such as Japan that require literal support for claim amendments.
2) In cases where there are lots of different possibilities for a certain invention, it may be based to enumerate them within the written description to meet 35 USC 112. This may take extra work but it can be found to be very helpful during litigation and/or prosecution. One such example for computer interfaces may be to include: touchscreens, mice, keyboard, microphone, trackball, or any other device you can think of that may be relevant to how your invention could be used (if interfacing could be an important aspect of your invention).
3) If filing a continuation-in-part application where you know the claims will be amended to include various new features, it may be desired to add a new description of the features within the application. Although you may not be able to claim the earlier priority date of the new features at least the application will meet the 35 USC 112 requirements, which could prove to be very helpful during subsequent litigation of the application.