You know something odd has happened in the law when a court takes 38 pages to say a basic thing — like that a patent must describe the invention it aims to cover.
The 11-judge Federal Circuit did just that today, 9-2. The court held that 35 U.S.C. § 112, first paragraph, "contains a written description requirement separate from enablement". Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., No. 08-1248, slip op. at 2 (Fed. Cir. Mar. 22, 2010) (en banc).
Ariad, MIT, the Whitehead Institute, and Harvard claimed that Eli Lilly infringed their patent on ways to reduce the symptoms of some diseases by causing a protein — Nuclear Factor kappaB — to behave. The problem (as Blawgletter gleans from the judges' five opinions) arises from the fact that the inventors seem not to have figured out how to suppress symptom-causing NF-kB activity. They appear simply to have discovered that NF-kB existed and guessed that somehow bringing it to heel would help sick people feel better.
Ariad, MIT, Whitehead, and Harvard urged that the first paragraph of section 12 requires a patent to say only enough to "enable" an in-the-know person to build something that makes NF-kB curtail its hurtful conduct inside human cells. But read the first paragraph for yourself:
The specification [in a patent] shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Id. at 7 (quoting 35 U.S.C. § 112). The "shall contain a written description of the invention" suggests to us that section 112 does demand "a written description of the invention". And we dare say that, if it doesn't, a lot of normal people would shake their heads in wonderment at the state of patent law.
The patent holders disagreed with these common folk, arguing that "as to enable" defines the purpose and function of the "written description of the invention" and puts the phrase in the sole service of enablement.
Does all this come under the head of metaphysics? Semantics? Symbology? Why does it matter?
It matters, as one brave judge kindly explained, because the patentees hoped to patent "basic scientific research." Id. additional views at 2 (Newman, J.). Harvard, MIT, and the rest had found out that NF-kB existed! No matter that they didn't also figure out how to get it to do what they wished it to do! Others can do the dirty work! Reward our brilliance!
The en banc court would have none of it. Good on them, we say.