Federal Circuit Declines en banc Review of Written Description Requirement

The U.S. Court of Appeals for the Federal Circuit declined a request by the University of Rochester for an en banc rehearing of the Court’s holding in University of Rochester v. G.D. Searle & Co., Inc. The Court held that the University of Rochester’s patent is invalid for failing to comply with the written description requirement of 35 U.S.C. §112, 1 because the patent specification failed to specifically disclose non-steroidal compounds that could inhibit the activity of the PGHS-2 gene product as required by the claims and there was no evidence that knowledge of such compounds would have been known to those having ordinary skill in the art. University of Rochester v. G.D. Searle & Co., Inc., Case No. 03-1304 (Fed. Cir. July 2, 2004) (Newman, J., dissenting) (Rader, J., dissenting) (Linn, J., dissenting) (Dyk, J., concurring) (Lourie, J., concurring).