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ARTICLE · 21 JULY 2014

Federal Circuit Holds That Even Functional Claims Require Structural Fence Posts

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In AbbVie Deutschland Gmbh v. Janssen Biotech, Inc., the Federal Circuit found AbbVie’s patents directed to anti-IL-12 antibodies invalid for lack of adequate written description.

United StatesIntellectual Property
Courtenay Brinckerhoff
Courtenay Brinckerhoff
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In AbbVie Deutschland Gmbh v. Janssen Biotech, Inc., the Federal Circuit affirmed the district court decision that found AbbVie's patents directed to anti-IL-12 antibodies invalid for lack of adequate written description. As between the parties, this decision leaves Centocor free to market its Stelara® product for the treatment of psoriasis. More generally, this decision emphasizes the importance of describing structurally varied species of a genus invention, even when the invention is defined by functional characteristics.

The AbbVie Patents at Issue

The patents at issue were AbbVie's U.S. 6,914,128 and U.S. 7,504,485, which share the same description and claim priority to the same provisional application filed in 1999. The claims at issue in both patents are directed to antibodies that bind to human interleukin 12 (IL-12), and define the claimed antibodies by functional characteristics only. Claim 29 of the '129 patent was treated as representative:

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