Last Week In The Federal Circuit (November 22-27): Written Description - Cobbling Together Numbers After The Fact

• Published date: 14 December 2021
• Subject Matter: Intellectual Property, Patent
• Law Firm: Morrison & Foerster LLP
• Author: Mr Stephen Diego Frausto

The week of Thanksgiving was a slower one for the Federal Circuit. But we still got an interesting written description decision with a divided panel. Below we provide our usual weekly statistics and our case of the week'our highly subjective selection based on whatever case piqued our interest.

Precedential opinions: 1

Non-precedential opinions: 4

Rule 36: 0

Longest pending case from argument: Indivior UK Limited v. Dr. Reddy's Laboratories S.A., No. 20-2073 (84 days)

Shortest (non-Rule 36) pending case from argument: Brittex Financial, Inc. v. Dollar Financial Group, Inc., No. 21-1370 (22 days)

Case of the week: Indivior UK Limited v. Dr. Reddy's Laboratories S.A., No. 20-2073.

Panel: Judges Lourie, Linn, and Dyk, with Judge Lourie writing the opinion and Judge Linn concurring in part and dissenting in part.

You should read this case if: you have a matter involving written description support.

In this week's case, the parties disputed whether patent claims had written description support in the originally filed patent application (so that the patentee could get the benefit of that application's filing date). Appellant Indivior argued against the PTAB's IPR holding that certain claims of its patent were unpatentable. Meanwhile, cross-appellant entities of Dr. Reddy's Laboratories (collectively, "DRL") argued against the PTAB's holding that DRL failed to demonstrate the unpatentability of claim 8 of the same patent.

The patent generally describes orally dissolvable films with therapeutic agents. The independent claim at issue recited a polymer range of 40% to 60%, while dependent claims recited a narrower range (48.2% to 58.6%) and a specific value (48.2%).

The originally filed application (i) did not expressly claim the broader range, (ii) did not disclose the specific lower and upper bounds of 40% and 60% polymer, respectively, and, most importantly, (iii) did not disclose a range of 40% to 60% polymer. Furthermore, the application contained "conflicting statements," including that the product may contain "any desired level of ... polymer" and that one embodiment contains "at least 25%" polymer, which is well outside the broader claimed range.

Indivior pointed to tables of exemplary formulations comprising multiple polymers which, collectively, totaled up to values which fell within the claimed range of 40-60%. The court noted that to arrive at these specific, particular values within the range, one must select several components, add up their...