Narrative Opinion Summary
In a patent interference dispute, Genentech, Inc. challenged a summary judgment favoring Chiron Corporation regarding a DNA construct coding for insulin-like growth factor-I (IGF-I) linked with a yeast secretory leader sequence. The interference involved competing patent applications from Genentech (Lee application) and Chiron (Barr application). The district court had ruled that Genentech's construction did not fall within the interference count, emphasizing a narrow interpretation of terms like 'coding,' 'joined,' and 'comprising' as applied to the DNA construct. Genentech argued that their construct, which included additional sequences for a fusion protein, was wrongly excluded from the count. The Federal Circuit reversed this decision, finding that the count allows for additional components and that the district court erred in its restrictive interpretation. The case was remanded for further proceedings, with the appellate court affirming Genentech's broader interpretation of the interference count. The court also addressed procedural motions, such as Chiron's motion to supplement the record and Genentech's motions related to reply briefs and appendices. The Federal Circuit's decision reflects a more flexible approach to patent claims, particularly regarding DNA constructs and their components.
Legal Issues Addressed
Application of 'Comprising' in Patent Lawsubscribe to see similar legal issues
Application: The term 'comprising' was interpreted to allow for additional components outside the essential elements of the DNA construct.
Reasoning: The interpretation of 'comprising' was determined to permit extra material outside the joined elements.
Enablement under 35 U.S.C. § 112subscribe to see similar legal issues
Application: Genentech argued that the district court improperly resolved a factual dispute regarding the enablement of Chiron's invention, which was not addressed by the court.
Reasoning: Genentech appealed, arguing that the district court's interpretation was unduly narrow and improperly resolved a factual dispute regarding Chiron's enablement of the invention under 35 U.S.C. § 112.
Interpretation of 'Joined' in Patent Claimssubscribe to see similar legal issues
Application: The appellate court disagreed with the district court's narrow interpretation of 'joined' as requiring a direct connection without intervening nucleotides.
Reasoning: The court rejected the district court's interpretation that 'joined' requires direct connection without intervening nucleotides.
Patent Interference Scopesubscribe to see similar legal issues
Application: The court found that the interference count allowed for additional components beyond the specified DNA construct, permitting the inclusion of Genentech's fusion protein.
Reasoning: The Board of Patent Appeals and Interferences determined that Lee's construct, which included both the IGF-I coding sequence and the alpha-factor processing signal, fell within the scope of the interference count.
Reading Frame in DNA Constructssubscribe to see similar legal issues
Application: The court held that constructs must maintain the proper reading frame but can include additional nucleotides at the beginning of the IGF-I sequence.
Reasoning: For the construct to yield human IGF-I correctly, it must maintain the proper reading frame, which does not exclude additional nucleotides at the beginning of the IGF-I sequence.