Legal Forum: Literal Claim Scope and After-Arising Technologies - What happens when a literal reading of a patent claim encompasses a technology developed after the patent's filing date? - BioPharm

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Legal Forum: Literal Claim Scope and After-Arising Technologies
What happens when a literal reading of a patent claim encompasses a technology developed after the patent's filing date?


BioPharm International
Volume 19, Issue 7

At trial, the issue under contention was whether Chiron's earlier-filed applications satisfied the written description and enablement requirements for claims covering monoclonal antibodies that bind selectively to human breast cancer cells. With respect to the 1984 priority application, the Chiron court noted that the 1984 application was not required to enable chimeric or humanized antibodies because these antibodies were not known at the time of filing the 1984 application.

According to the court, new technology that arises after an application filing date is by definition outside the bounds of the enablement requirement, and an inventor cannot be held responsible for enabling nonexistent technology. However, because chimeric or humanized antibody technology did not exist at the time of filing the 1984 application, the inventors cannot be said to "possess and disclose this technology," thereby failing to satisfy the written description requirement.

With respect to chimeric antibodies, the court noted that they were known at the time of filing the 1985 and 1986 applications, having been reported in June 1984. Yet, the court referred to chimeric antibodies as "nascent technology," with respect to the 1985 and 1986 applications, and required that a patent specification provide a "specific and useful teaching" of nascent technology.4 Because neither priority application provided such a teaching, the applications did not enable the claimed subject matter in the later-filed patent.

A different outcome has been reached in cases related to computer, electronic, or software arts. In Superguide Corporation v. DirecTV Enterprises, Inc.,5 at issue were the scope of claims related to interactive electronic program guides. Super-Guide owned several patents claiming ownership of a device that allows a television user to display on a television screen only the program information desired. The device stored electronic television program information in a microcontroller's memory to allow a user to search the stored information. When SuperGuide sued DirecTV asserting infringement of its patents, at issue was whether the literal claim scope was limited to analog signals, or whether the claims also encompassed digital signals. At the time of filing the applications in 1985, video data were predominantly communicated in an analog format, with the digital format emerging as a new technology.5

The SuperGuide court ruled that the law does not require that an applicant describe every conceivable and possible future embodiment of his invention in the specification. In contrast to the Chiron court's ruling that a specific and useful teaching must be provided for an emerging technology, the SuperGuide court did not require a detailed description of digital technology for the claims to encompass a digital video format.

The dramatically different results reached by the courts when applying the same legal rules are explained, at least in part, by the underlying technology. The courts currently regard the biotechnological field as being filled with a high level of unpredictability. Unpre-dictability in biotechnology exists, for example, in the complexity of cellular systems used for study and unknown changes in function upon structure variation. These factors are not present in the electronic, computer, and software arts. Hence, patent claims in the biotechnological field typically do not capture an after-arising technology, whereas patent claims in these other fields often do. Perhaps as the biotechnological industry continues to mature, the alleged level of unpredictability from a judicial perspective will decrease, permitting biotechnology-related claims to capture after-arising technologies.

Judy M. Mohr, Ph.D. Perkins Coie, LLP, 101 Jefferson Drive Menlo Park, CA 94025, 650.838.4402,fax 650.838.4350,

REFERENCES

1. Ward, ES, Gussow, D, Griffiths AD, Jones PT, and Winter, G. Binding activities of a repertoire of single immunoglobulin variable domains secreted from Escherichia coli. Nature 1989; 341:544.

2. 35 U.S.C. 112, first paragraph.

3. In re Wands, 858 F.2d 731 (Fed. Cir. 1988).

4. Chiron Corporation v. Genentech, Inc., 363 F.3d 1247 (Fed. Cir. 2004).

5. SuperGuide Corporation v. DirecTV Enterprises, Inc., 358 F.3d 870 (Fed. Cir. 2004).


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