Bloomberg BNA’s Patent Trademark & Copyright Law Daily™is the IP industry’s premier news service, offering objective, timely,and reliable daily news coverage and commentary from leading IP law...
By Tony Dutra
May 19 — A patent application disclosing drug administration in an area surrounding the source of pain is adequate written description support for “local” administration, the U.S. Court of Appeals for the Federal Circuit ruled on May 19.
The court reversed the judgment of the Patent Trial and Appeal Board in an interference case related to priority of inventorship of treating herniated disc injuries using a group of drugs known as TNF-alpha inhibitors.
Edward Tobinick's interfering patent application (U.S. Patent Application No. 12/714,205) challenged Kjell Olmarker and Bjorn Rydevik's patents (U.S. Patent Nos. 7,708,995 and 7,811,990) on the use of TNF-alpha inhibitors for treating a nerve disorder, such as a nerve root injury caused by a herniated disc.
The board construed the term “administered locally” to mean administering the drug directly to the location where the nucleus pulposus—a substance in the middle of the spinal disc—is causing the symptoms. In contrast, Tobinick's application described “local” to include “administration of medication near the site of injury followed by diffusion or travel of the medication to the site of the injury.”
The PTAB thus granted Olmarker's motion for judgment that Tobinick's claims were unpatentable under 35 U.S.C. §112, ¶1. Tobinick appealed.
The Federal Circuit, in an opinion written by Jimmie V. Reyna, affirmed the claim construction judgment but determined that the '205 application included adequate support.
The application discusses “perispinal” administration, which can be as much as 10 centimeters around the nucleus pulposus, the court acknowledged.
However, the court allowed that “local” included “the epidural space adjacent to a herniated disc, which is the location where nucleus pulposus causes nerve injury,” and it noted that the application specifically disclosed an epidural injection “to the anatomic area adjacent to the disc herniation.”
“While the ‘perispinal' administration discussed in the '205 application certainly covers more than just local administration techniques, this does not render all perispinal techniques non-local,” the court said. “The '205 application need only reasonably convey to one skilled in the art that Tobinick had possession of at least one embodiment that meets the Board's construction of local administration.”
The court remanded for further proceedings.
Judges Alan D. Lourie and Evan J. Wallach joined the opinion.
Robert W. Hahl of Neifeld IP Law PC, Alexandria, Va., represented Tobinick. Todd R. Walters of Buchanan, Ingersoll & Rooney PC, Alexandria, Va., represented Olmarker.
To contact the reporter on this story: Tony Dutra in Washington at firstname.lastname@example.org
To contact the editor responsible for this story: Naresh Sritharan at email@example.com
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to firstname.lastname@example.org.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to email@example.com.
Put me on standing order
Notify me when new releases are available (no standing order will be created)