The Regents of the University of California v. Eli Lilly and Company (1997)

In the context of this invention, a vague functional description and an invitation for further research does not constitute written disclosure of a specific inhibitor. 1 See Eli Lilly, 119 F.3d at 1566 (holding that written description requires more than a “mere wish or plan for obtaining the claimed chemical invention”); see also id. at 1567 (“[A] description which renders obvious a claimed invention is not sufficient to satisfy the written description requirement of that i…

Eli Lilly, 119 F.3d at 1568 (“[E]very species in a genus need not be described in order that a genus meet the written descrip- tion requirement.”).

There is no claim or counterclaim against The Board of Re- gents that places it in the position of a defendant.” Id. at 3 (citing Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1565 (Fed.

See, e.g., Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1575 (Fed.Cir. 1997) ("What is relevant is whether [the withheld material] discloses subject matter relevant to the examination of the ... patent application that is not taught by the [material already before the PTO]."); Micro Chem., Inc. v. Great Plains Chem.

See Regents, 119 F.3d at 1570 ("There is no reason to believe that a reasonable examiner would have made any different decision. . . .").

“A written description of an invention involving a chemical genus, like a description of a chemical species, ‘requires a precise definition, such as by structure, formula, [or] chemical name,’ of the claimed sub- ject matter sufficient to distinguish it from other materi- als.” Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed.

Co., 359 F.3d 1237, 1239 (10th Cir.2004) ("[T]he Eleventh Amendment's abrogation of federal judicial power `over any suit ... commenced or prosecuted against one of the United States' does not apply to suits commenced or prosecuted by a State." (emphasis in original)); Regents of the Univ. of California v. Eli Lilly & Co., 119 F.3d 1559, 1564-65 (Fed.Cir. 1997) ("the Eleventh Amendment applies to suits `against' a state, not suits by a state."); Huber, Hunt, & Nichols, Inc. …

Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1566 (Fed.

For genus claims, the written description requirement generally “re- quires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Id. at 1350 (quoting Regents of the Univ. of California v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed.

Moreover, as to canola, the specification and trial evi- dence support a finding that the inventors had more than “a ‘mere wish or plan’ for obtaining the claimed invention.” Centocor, 636 F.3d at 1348 (quoting Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1566 (Fed.

Moreover, as to canola, the specification and trial evi- dence support a finding that the inventors had more than “a ‘mere wish or plan’ for obtaining the claimed invention.” Centocor, 636 F.3d at 1348 (quoting Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1566 (Fed.

Appellant’s Br. 41–42 (citing Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1564 (Fed.

Cir. 2013) (quoting Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1566 (Fed.

Cir. 2013) (quoting Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1566 (Fed.

Cir. 2011) (quoting Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed.

Cir. 2003) (citing Clark v. Barnard , 108 U.S. 436 , 447, 2 S.Ct. 878 , 27 L.Ed. 780 (1883) ); Regents of the Univ. of Cal. v. Eli Lilly & Co. , 119 F.3d 1559 , 1564-65 (Fed.

See Eli Lilly, 119 F.3d at 1568 (“The description requirement of the patent statute requires a description of an invention, not an indication of a result that one might achieve if one made that invention.”).

Eli Lilly, 119 F.3d at 1567 (“Describing a method of preparing a cDNA or even describing the protein that the cDNA encodes ... does not necessarily describe the cDNA itself”).

See id. at 1568 (“A written description of an invention of a chemical genus, like a description of a chemical species, requires a precise definition, such as by structure, formula, [or] chemical name, of the claimed subject matter to distinguish it from other materials.”) (citation and internal quotation omitted).

See Eli Lilly, 119 F.3d at 1565 (“[I]n a case such as this in which several 10 highly technical factual issues are presented and the other relevant factors are in equipoise, the 11 interest of judicial economy may favor transfer to a court that has become familiar with the issues.”). 12 Based on the above reasoning, the Court finds that judicial economy is neutral or only 13 slightly in favor of transfer. 14 iii.

See Eli Lilly, 119 F.3d at 1566 (patent invalid for lack of written description “because the specification, although it provided an adequate written description of rat cDNA, did not provide an adequate written description of the [human] cDNA required by the asserted claims.”); id. at 1568 (“a description of rat insulin cDNA is not a description of the broad classes of vertebrate or mammalian insulin cDNA.”).

In re Alonso, 545 F.3d 1015, 1021 (Fed.Cir.2008) (affirming finding of invalidity by BPAI where “the one compound disclosed ... cannot be said to be representative of a densely populated genus.”); Eli Lilly, 119 F.3d at 1567-68 (“[A] description of rat insulin cDNA is not a description of the broad classes of vertebrate or mammalian insulin cDNA.”).

Given that the other factors lean slightly in favor of Defendants, this Court follows the Federal Circuit’s guidance that “in a case such as this in which several highly technical factual issues are presented and the other relevant factors are in equipoise, the interest of judicial economy may favor transfer to a court that has become familiar with the issues.” Regents of the U. of California v. Eli Lilly & Co., 119 F.3d 1559, 1565 (Fed.

Given that the other factors lean slightly in favor of Defendants, this Court follows the Federal Circuit’s guidance that “in a case such as this in which several highly technical factual issues are presented and the other relevant factors are in equipoise, the interest of judicial economy may favor transfer to a court that has become familiar with the issues.” Regents of the U. of California v. Eli Lilly & Co., 119 F.3d 1559, 1565 (Fed.

Given that the other factors lean slightly in favor of Defendants, this Court follows the Federal Circuit’s guidance that “in a case such as this in which several highly technical factual issues are presented and the other relevant factors are in equipoise, the interest of judicial economy may favor transfer to a court that has become familiar with the issues.” Regents of the U. of California v. Eli Lilly & Co., 119 F.3d 1559, 1565 (Fed.

That “requires the disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus so that one of skill in the art can ‘visualize or recognize’ the members of the genus.” Ariad, 598 F.3d at 1350 (quoting Regents of the Univ. of California v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed.

Cal. Nov. 4, 2015); Regents of the Univ. 18 of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1565 (Fed.

Cal. Nov. 4, 2015); Regents of the Univ. 18 of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1565 (Fed.

“A reference is cumulative when it ‘teaches no more than what a reasonable examiner would consider to be taught by the prior art already before the PTO.’” Id. (quoting Regents of the Univ. of Calif. v. Eli Lilly & Co., 119 F.3d 1559, 1575 (Fed.

Such allegations “are necessary to explain both ‘why’ the withheld information is material 14 and not cumulative and ‘how’ an examiner would have used this information in assessing the 15 patentability of the claims.” Id. at 1329-30 . 16 “[I]nformation is material to patentability when it is not cumulative to information . . . of 17 record in the application, and [it] establishes, by itself or in combination with other information, a 18 prima facie case of unpatentability of…

Id. (citing Regents of Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1570 (Fed.

Tex. Nov. 10, 2017) (quoting Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1565 (Fed.

Of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1565 (Fed.

Cf. Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1565 (Fed.Cir.1997).

Cir. 2006), and a reference is cumulative if it “teaches no more than what a reasonable examiner would consider to be taught by the prior art already before the PTO,” Regents of the Univ. of Calif. v. Eli Lilly & Co., 119 F.3d 1559, 1575 (Fed.

Of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1565 (Fed.

The Interests of Justice Contravene Transfer 17 Finally, the Court addresses any other considerations raised by the parties under the 18 interests of justice factor, a “catchall factor, which includes considerations of judicial 19 economy and any other concerns that weigh on the decision to transfer.” Secured Mail 20 Solutions, LLC, 2013 WL 8596579 , at *6 (citing Regents of the Univ. of Cal. v. Eli Lilly & 21 Co., 119 F.3d 1559, 1565 (Fed.

Because 27 such a plaintiff is alleging a failure to act instead of an affirmative act, the plaintiff sometimes 1 Eli Lilly & Co., 119 F.3d 1559, 1570 (Fed.

Interest of Justice 26 “Consideration of the interest of justice, which includes judicial economy, may be determinative 27 to a particular transfer motion, even if the convenience of the parties and witnesses might call for a 28 different result.” Regents of the Univ. of Cal. v. Eli Lilly and Co., 119 F.3d 1559, 1565 (Fed.

Thus, to the extent that Iron World is concerned that Barrette will reverse course and seek to include “minute” movements covered by prior art (i.e. movements that result in a pivotal range of only up to about 15 degrees) in these claims later in these proceedings, that avenue is foreclosed by the specifications and by Barrette’s own arguments. inventor invented the claimed invention,’” Regents of the Univ. of California v. Eli Lilly & Co., 119 F.3d 1559, 1566 (Fed.

Considering the sufficiency of a written description involves “how large a genus is involved and what species of the genus are described in the patent.” Id. “[E]very species in a genus need not be described in order that a genus meet the written description requirement.” Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed.

Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1565 (Fed.

Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1565 (Fed.

Cal. Mar. 14, 2013) (quoting Regents of the University of 19 California v. Eli Lilly and Co., 119 F.3d 1559, 1565 (Fed.

Cal. Mar. 14, 2013) (quoting Regents of the University of 19 California v. Eli Lilly and Co., 119 F.3d 1559, 1565 (Fed.

D.I. 17 at 23 n.7. “[I]n a case such as this in which several highly technical factual issues are presented and the other relevant factors are in equipoise, the interest of judicial economy may favor...a court that has become familiar with the issues.” Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1565 (Fed.

Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1566 (Fed.

Tex. Sept. 10, 2014) (“In certain circumstances, however, the Federal Circuit has found that ‘[c]onsideration of interest of justice, which includes judicial economy, may be determinative to a particular transfer motion, even if the convenience of the parties and witnesses might call for a different result.’” (quoting Regents of Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1565 (Fed.

Of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1565 (Fed.

Virginia Innovation, 2019 WL 3082314 , at *23 (citing Regents of Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1565 (Fed.