Federal Circuit Issues En Banc Decision In Ariad v. Eli Lilly

The Holding: On March 22, 2010, the Federal Circuit ("CAFC") confirmed en banc that 35 U.S.C. § 112, ¶1 contains a written description requirement that is separate from the enablement requirement. Ariad Pharms., Inc. v. Eli Lilly & Co., No. 2008-1248 (Fed. Cir. March 22, 2010). The lengthy (72-page) decision is based on statutory interpretation, citation to U.S. Supreme Court precedent and previous CAFC decisions and attempts to provide guidance concerning what is needed to comply with the written description requirement. Importantly, although the case involved a biotechnology patent, its holding should not be viewed as in any way limited to the biotechnology area.

History of the Case: In 2009, Ariad petitioned for en banc rehearing of a prior panel decision of the CAFC that had reversed-in-part a jury verdict of no invalidity of four asserted claims from Ariad's U.S. Patent No. 6,410,516 (the '516 patent). The panel decision held that the claims were invalid for