Novartis Pharmaceuticals v. Accord Healthcare Inc.

Case: 21-1070 Document: 51 Page: 1 Filed: 06/21/2022
United States Court of Appeals
for the Federal Circuit
______________________
NOVARTIS PHARMACEUTICALS CORPORATION,
Plaintiff-Appellee
v.
ACCORD HEALTHCARE, INC., AUROBINDO
PHARMA LTD., AUROBINDO PHARMA USA, INC.,
DR. REDDY’S LABORATORIES, INC., DR. REDDY’S
LABORATORIES, LTD., EMCURE
PHARMACEUTICALS LTD., HERITAGE
PHARMACEUTICALS INC., GLENMARK
PHARMACEUTICALS INC., USA, GLENMARK
PHARMACEUTICALS LIMITED, HETERO USA,
INC., HETERO LABS LIMITED UNIT-V, HETERO
LABS LIMITED, MYLAN PHARMACEUTICALS,
INC., PRINSTON PHARMACEUTICAL INC.,
STRIDES GLOBAL PHARMA PRIVATE LIMITED,
STRIDES PHARMA, INC., TORRENT PHARMA
INC., TORRENT PHARMACEUTICALS LTD.,
ZYDUS PHARMACEUTICALS (USA) INC., CADILA
HEALTHCARE LTD., APOTEX INC., APOTEX
CORP., SUN PHARMACEUTICAL INDUSTRIES,
LTD., SUN PHARMACEUTICAL INDUSTRIES INC.,
SUN PHARMA GLOBAL FZE,
Defendants
HEC PHARM CO., LTD., HEC PHARM USA INC.,
Defendants-Appellants
______________________
2021-1070
______________________
Case: 21-1070 Document: 51 Page: 2 Filed: 06/21/2022
2 NOVARTIS PHARMACEUTICALS v. ACCORD HEALTHCARE INC.
Appeal from the United States District Court for the
District of Delaware in No. 1:18-cv-01043-KAJ, Circuit
Judge Kent A. Jordan.
______________________
Decided: June 21, 2022
______________________
JANE M. LOVE, Gibson, Dunn & Crutcher LLP, New
York, NY, argued for plaintiff-appellee. Also represented
by PAUL E. TORCHIA, ROBERT TRENCHARD.
PAUL SKIERMONT, Skiermont Derby LLP, Dallas, TX,
argued for defendants-appellants. Also represented by
SARAH ELIZABETH SPIRES; MIEKE K. MALMBERG, Los Ange-
les, CA.
______________________
Before MOORE, Chief Judge, LINN and HUGHES, Circuit
Judges.
Opinion for the court filed by Chief Judge MOORE.
Dissenting opinion filed by Circuit Judge LINN.
MOORE, Chief Judge.
HEC Pharm Co., Ltd. and HEC Pharm USA Inc. (col-
lectively, HEC) petition for rehearing of our prior decision
in this case, 21 F.4th 1362 (Fed. Cir. 2022), in which we
affirmed a final judgment of the United States District
Court for the District of Delaware. The district court de-
termined that claims 1–6 of U.S. Patent No. 9,187,405 are
not invalid and that HEC infringes them. Because the ’405
patent fails to disclose the absence of a loading dose, the
district court clearly erred in finding that the negative
claim limitation “absent an immediately preceding loading
dose” added during prosecution to overcome prior art
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NOVARTIS PHARMACEUTICALS v. ACCORD HEALTHCARE INC. 3
satisfies the written description requirement of 35 U.S.C.
§ 112(a). We grant HEC’s petition for panel rehearing, va-
cate our prior decision, and reverse the district court’s judg-
ment that Novartis’ claims are not invalid for inadequate
written description.
BACKGROUND
The ’405 patent discloses methods of treating relaps-
ing-remitting multiple sclerosis (RRMS) using the immu-
nosuppressant fingolimod. E.g., ’405 patent at claim 1,
8:56–60. Each claim of the ’405 patent requires adminis-
tering fingolimod “at a daily dosage of 0.5 mg, absent an
immediately preceding loading dose regimen.” Id. at claim
1. A loading dose is a “higher-than-daily dose . . . usually
given as the first dose.” J.A. 27 ¶ 63 (internal quotation
marks omitted). The patent’s specification does not men-
tion loading doses, much less the absence of a loading dose.
Instead, it describes administering fingolimod at regular
intervals (e.g., once daily, multiple times per day, or every
other day). ’405 patent at 11:20–38.
Novartis owns the ’405 patent and markets a drug un-
der the brand name Gilenya that purportedly practices the
patent. HEC filed an abbreviated new drug application
(ANDA) with the Food and Drug Administration seeking
approval to market a generic version of Gilenya. Novartis
sued HEC in the District of Delaware, alleging that HEC’s
ANDA infringes all claims of the ’405 patent. 1
After a four-day bench trial, the district court found
that HEC’s ANDA infringes and that the claims are not in-
valid, either as anticipated by Kappos 2006 or for inade-
quate written description of the no-loading-dose or daily-
1 Novartis sued several other defendants who also
filed ANDAs, but those cases were settled or stayed before
trial.
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4 NOVARTIS PHARMACEUTICALS v. ACCORD HEALTHCARE INC.
dosage limitations. HEC appeals as to written description.
We have jurisdiction under 28 U.S.C. § 1295(a)(1).
DISCUSSION
“Whether a claim satisfies the written description re-
quirement is a question of fact that, on appeal from a bench
trial, we review for clear error.” Allergan, Inc. v. Sandoz
Inc., 796 F.3d 1293, 1308 (Fed. Cir. 2015) (quoting Alcon
Rsch. Ltd. v. Barr Labs., Inc., 745 F.3d 1180, 1190 (Fed.
Cir. 2014)). Under the clear error standard, we defer to the
district court’s findings “in the absence of a definite and
firm conviction that a mistake has been made.” Scanner
Techs. Corp. v. ICOS Vision Sys. Corp. N.V., 528 F.3d 1365,
1374 (Fed. Cir. 2008) (cleaned up). Inadequate written de-
scription must be shown by clear and convincing evidence.
Hynix Semiconductor Inc. v. Rambus Inc., 645 F.3d 1336,
1351 (Fed. Cir. 2011) (citing ICU Med., Inc. v. Alaris Med.
Sys., Inc., 558 F.3d 1368, 1376 (Fed. Cir. 2009)).
A
To satisfy the written description requirement, a pa-
tent’s specification must “reasonably convey[ ] to those
skilled in the art that the inventor had possession of the
claimed subject matter as of the filing date.” Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010) (en banc). Such possession must be “shown in
the disclosure.” Id. It is not enough that a claimed inven-
tion is “an obvious variant of that which is disclosed in the
specification.” Lockwood v. Am. Airlines, Inc., 107 F.3d
1565, 1572 (Fed. Cir. 1997). Disclosure is essential; it is
“the quid pro quo of the right to exclude.” Kewanee Oil Co.
v. Bicron Corp., 416 U.S. 470, 484 (1974); see also Enzo Bi-
ochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 970 (Fed. Cir.
2002) (“[D]escription is the quid pro quo of the patent sys-
tem.”).
For negative claim limitations, like the no-loading-dose
limitation at issue here, there is adequate written
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NOVARTIS PHARMACEUTICALS v. ACCORD HEALTHCARE INC. 5
description when, for example, “the specification describes
a reason to exclude the relevant [element].” Santarus, Inc.
v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012);
Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1355 (Fed. Cir.
2015) (same); Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1348
(Fed. Cir. 2016) (same), overruled on other grounds by Aqua
Prods., Inc. v. Matal, 872 F.3d 1290, 1301 (Fed. Cir. 2017)
(en banc). A reason to exclude an element could be found
in “statements in the specification expressly listing the dis-
advantages of using” that element. Santarus, 694 F.3d at
1351. Another reason could be that the specification “dis-
tinguishes among” the element and alternatives to it.
Inphi, 805 F.3d at 1357; see also In re Johnson, 558 F.2d
1008, 1017–19 (C.C.P.A. 1977) (reversing rejection for in-
adequate written description where specification disclosed
several species of a genus and claims recited genus but ex-
cluded two species of lost interference count).
The common denominator of these examples is disclo-
sure of the element. That makes sense because “the hall-
mark of written description is disclosure.” Ariad, 598 F.3d
at 1351; see also Lockwood, 107 F.3d at 1571 (“It is the dis-
closures of the applications that count.”). Silence is gener-
ally not disclosure. See Seabed Geosolutions (US) Inc. v.
Magseis FF LLC, 8 F.4th 1285, 1288 (Fed. Cir. 2021)
(“[S]ilence does not support reading the claims to exclude
gimbaled geophones.” (citations omitted)); MPEP
§ 2173.05(i) (9th ed. Rev. 10.2019, June 2020) (“The mere
absence of a positive recitation is not a basis for an exclu-
sion.”). If it were, then every later-added negative limita-
tion would be supported so long as the patent makes no
mention of it. While a negative limitation need not be re-
cited in the specification in haec verba, there generally
must be something in the specification that conveys to a
skilled artisan that the inventor intended the exclusion,
such as a discussion of disadvantages or alternatives. Con-
sistent with our precedent in Santarus, Inphi and Nike, the
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6 NOVARTIS PHARMACEUTICALS v. ACCORD HEALTHCARE INC.
written description requirement cannot be met through
simple disregard of the presence or absence of a limitation.
While a written description’s silence about a negative
claim limitation is a useful and important clue and may
often be dispositive, it is possible that the written descrip-
tion requirement may be satisfied when a skilled artisan
would understand the specification as inherently disclos-
ing the negative limitation. 2 For example, if the record es-
tablished that in a particular field, the absence of mention
of a limitation necessarily excluded that limitation, written
description could be satisfied despite the specification’s si-
lence. See Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159 (Fed.
Cir. 1998) (“[M]issing descriptive matter must necessarily
be present in the . . . specification such that one skilled in
the art would recognize such a disclosure.” (citing Cont’l
Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed.
Cir. 1991))); see also In re Robertson, 169 F.3d 743, 745
(Fed. Cir. 1999) (“To establish inherency [for purposes of
anticipation], . . . evidence must make clear that the miss-
ing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recog-
nized by persons of ordinary skill.” (internal quotation
2 Novartis contends the written description require-
ment may be satisfied by “implicit disclosure” as distinct
from express or inherent disclosure. Novartis Br. 50–51.
Yet it fails to identify any case holding that “implicit dis-
closure” (whatever that means) is sufficient. Novartis cites
In re Kolstad, a non-precedential decision involving express
disclosure. 907 F.2d 157 (Fed. Cir. 1990) (non-preceden-
tial). If an implicit disclosure is one that would render the
limitation obvious to a skilled artisan, such a disclosure
cannot under our precedent satisfy the written description
requirement. Lockwood, 107 F.3d at 1572 (“A description
which renders obvious the invention for which an earlier
filing date is sought is not sufficient.”).
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marks and citation omitted)). When the specification is it-
self silent regarding a negative limitation, testimony from
a skilled artisan as to possibilities or probabilities that the
recited element would be excluded would not suffice, lest
such testimony could effectively eliminate the written de-
scription requirement. If silence were generally sufficient,
all negative limitations would be supported by a silent
specification. If, however, a patent owner could establish
that a particular limitation would always be understood by
skilled artisans as being necessarily excluded from a par-
ticular claimed method or apparatus if that limitation is
not mentioned, the written description requirement would
be satisfied despite the specification’s silence.
B
The district court found that because there is no reci-
tation of a loading dose in the specification, the no-loading-
dose limitation is supported. J.A. 26 ¶ 61. The district
court further found that the no-loading-dose limitation is
disclosed in the specification because “[t]he Prophetic Trial
describes giving a ‘daily dosage of 0.5 . . . mg’ fingolimod to
treat RRMS, started ‘initially.’ The Prophetic Trial tells a
person of skill that on day 1, treatment begins with a daily
dose of 0.5 mg, not a loading dose.” J.A. 26 ¶ 62 (citations
omitted). Novartis, likewise, argues that the specification
satisfies the written description requirement for the no-
loading-dose limitation because it indicates that the dosing
regimen starts by “initially” administering a daily dosage.
Novartis Br. 44.
The district court’s finding that the specification dis-
closes “initially” starting with a daily dose was clearly er-
roneous. The specification nowhere describes “initially”
administering a daily dosage. The specification says, “Ini-
tially patients receive treatment for 2 to 6 months.” ’405
patent at 11:13–14. This sentence speaks to the initial
length of treatment, not the dosage with which treatment
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8 NOVARTIS PHARMACEUTICALS v. ACCORD HEALTHCARE INC.
begins. Dr. Lublin, one of Novartis’ physician experts, ad-
mitted this:
Q. And then . . . there’s a sentence that begins: In-
itially, patients receive treatment for two to six
months. Do you see that?
A. I do.
Q. And what does that tell you about how the dos-
ing would work?
A. It suggests to me they’re taking the dosing
that’s outlined in that first sentence continually for
two to six months.
J.A. 22792 (emphasis added).
The contrary testimony of Novartis’ second physician
expert, Dr. Steinman, is inconsistent with the plain text of
the specification and therefore carries no weight.
J.A. 23343 (testifying that “initially” is “really zooming in
on Day 1” and conveying that treatment starts with “a daily
dose of 0.5”). “[E]xpert testimony that is inconsistent with
unambiguous intrinsic evidence should be accorded no
weight.” Bell & Howell Document Mgmt. Prods. Co. v. Al-
tek Sys., 132 F.3d 701, 706 (Fed. Cir. 1997) (citations omit-
ted). As HEC argues in its rehearing petition, the district
court’s reliance on a misquotation “ferreted into trial testi-
mony by Novartis’ experts” was clearly erroneous. Pet. for
Reh’g 6; see J.A. 26–27 ¶¶ 62–63 (district court relying on
testimony that specification describes “initially” adminis-
tering daily dosage).
The ’405 specification discloses neither the presence
nor absence of a loading dose. Loading doses—whether to
be used or not—are simply not discussed. Novartis’ experts
readily admitted this. J.A. 23344 (“Q. Is there anywhere
in [the specification] that you saw reference to the loading
dose? A. No.”); J.A. 22791 (Dr. Lublin testifying that “in-
formation of having a loading dose is not there”). Dr.
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NOVARTIS PHARMACEUTICALS v. ACCORD HEALTHCARE INC. 9
Lublin also agreed that “[n]othing in the text of the speci-
fication of the ’405 patent discloses a rationale for the neg-
ative limitation prohibiting an immediately preceding
loading dose.” J.A. 22872–73. The fact that the specifica-
tion is silent about loading doses does not support a later-
added claim limitation that precludes loading doses.
The district court also found, independent of the mis-
quoted “initially” language, that the specification’s disclo-
sure of a daily dosage combined with its silence regarding
a loading dose would “tell a person of skill that loading
doses are excluded from the invention.” J.A. 26 ¶ 61. That,
too, was clearly erroneous. Novartis does not defend this
finding. 3 And for good reason.
There is significant tension in the district court’s find-
ing that the specification’s disclosure excludes a loading
dose, but that the Kappos 2006 abstract does not. Both are
silent regarding loadings doses, and both disclose a daily
dosage. The district court defended this inconsistency by
claiming that “[u]nlike a patent, which is presumed com-
plete, an abstract [like Kappos 2006] is not presumed to
contain all of the necessary information about the study.”
J.A. 30 ¶ 74. This concept that a patent is presumed “com-
plete” infected the district court’s analysis and the experts’
testimony regarding the no-loading-dose limitation. For
example, Dr Lublin testified:
Q. What would a person of skill reading the patent
have thought about [the] question [of written de-
scription]?
A. They would have viewed the patent as a docu-
ment, as a complete document, that should give you
3 Nor could it. Novartis admittedly did not “argue
below that inherency . . . applies to the ’405 Patent’s
method claims.” Novartis Br. 50. Any defense of the dis-
trict court’s finding is thus forfeit.
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10 NOVARTIS PHARMACEUTICALS v. ACCORD HEALTHCARE INC.
all the information you need to carry out the
claims, and that information of having a loading
dose is not there, and what’s instead there is exam-
ples of daily dose, daily dose, daily dose.
J.A. 22791. A patent is not presumed complete such that
things not mentioned are necessarily excluded. We pre-
sume only that a patent has adequate written description,
not that it is complete. Nat’l Recovery Techs., Inc. v. Mag-
netic Separation Sys., Inc., 166 F.3d 1190, 1195 (Fed. Cir.
1999) (“The presumption of validity includes a presump-
tion that the patent complies with § 112.” (citing N. Tele-
com, Inc. v. Datapoint Corp., 908 F.2d 931, 941 (Fed. Cir.
1990))).
Importantly, the disclosure of a daily dosage cannot
amount to a disclosure that there can be no loading dose,
because such a finding is at odds with the prosecution his-
tory. The Patent Office allowed the claims only after the
applicants added the no-loading-dose limitation.
J.A. 23903 (examiner’s rejection in parent application);
J.A. 23892–93 (applicants’ response); see also Novartis Br.
11–12. The applicants explained that they added the no-
loading-dose limitation “to specify that the [daily dosage]
cannot immediately follow a loading dose regimen” and “to
further distinguish their claims from the disclosure of
[prior art].” J.A. 23892. If reciting “daily dosage” without
mentioning a loading dose necessarily excluded a loading
dose, there would have been no reason for the applicants to
add the no-loading-dose limitation. Neither the applicants
nor the examiner understood the words “daily dosage”
without the words “no loading dose” to convey the absence
of a loading dose. Accordingly, the district court’s contrary
finding was clearly erroneous.
There is expert testimony that the specification dis-
closes the absence of a loading dose. Dr. Steinman testi-
fied:
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NOVARTIS PHARMACEUTICALS v. ACCORD HEALTHCARE INC. 11
Q. And do you see the sentence there, it says, “Ini-
tially patients receive treatment for 2 to 6 months.”
What would that tell a person of skill?
A. Well, there were two places [in the specification]
that if there were going to be an immediately pre-
ceding loading dose, you would give it before the in-
itial treatment, so you would really necessarily
want to put it right there. And the second place
was earlier when you talked about a daily dosage
of 0.5. But there were two gates that if you wanted
to interject something about a loading dose, those
were the opportunities in this. And it was zero out
of two places where they, I think, necessarily would
have put it in.
J.A. 23334–35. This expert testimony is focused on where
in the specification the patentee would have mentioned a
loading dose if they intended a loading dose to be included.
But the question is not whether the patentee intended
there to be a loading dose; the question is whether the pa-
tentee precluded the use of a loading dose. On this record,
there is no evidence that a skilled artisan would under-
stand silence regarding a loading dose to necessarily ex-
clude a loading dose. In fact, all the experts agreed that
loading doses are sometimes given to MS patients. See
J.A. 22780 (Dr. Lublin explaining that loading doses have
been used in trials of MS drugs and with fingolimod in par-
ticular); J.A. 22794; J.A. 23347–48 (Dr. Steinman acknowl-
edging that loading doses are used in MS treatments);
J.A. 23475 (Dr. Jusko, Novartis’ pharmacology expert, tes-
tifying that fingolimod was given to transplant patients
with a loading dose, and that he “could envision the possi-
bility of starting with a loading dose”). And, importantly,
there is intrinsic evidence that a skilled artisan would not
understand reciting a daily dosage regimen without men-
tioning a loading dose to exclude a loading dose.
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12 NOVARTIS PHARMACEUTICALS v. ACCORD HEALTHCARE INC.
We do not today create a heightened standard for neg-
ative claim limitations. Just as disclosure is the “hallmark
of written description” for positive limitations, Ariad, 598
F.3d at 1351, so too for negative limitations. That disclo-
sure “need not rise to the level of disclaimer.” Santarus,
694 F.3d at 1351. Nor must it use the same words as the
claims. Lockwood, 107 F.3d at 1572 (“[T]he exact terms
need not be used in haec verba.” (citing Eiselstein v. Frank,
52 F.3d 1035, 1038 (Fed. Cir. 1995))). Rather, as with pos-
itive limitations, the disclosure must only “reasonably con-
vey[ ] to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing
date.” Ariad, 598 F.3d at 1351. While silence will not gen-
erally suffice to support a negative claim limitation, there
may be circumstances in which it can be established that a
skilled artisan would understand a negative limitation to
necessarily be present in a disclosure. This is not such a
case.
CONCLUSION
The district court’s finding that the no-loading-dose
limitation meets the written description requirement was
clearly erroneous. We grant HEC’s petition for panel re-
hearing, vacate our prior decision, and reverse the district
court’s judgment that the claims of the ’405 patent are not
invalid. We need not reach HEC’s argument that the dis-
trict court also clearly erred in finding adequate written
description for the “daily dosage of 0.5 mg” limitation.
REVERSED
COSTS
No costs.
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United States Court of Appeals
for the Federal Circuit
______________________
NOVARTIS PHARMACEUTICALS CORPORATION,
Plaintiff-Appellee
v.
ACCORD HEALTHCARE, INC., AUROBINDO
PHARMA LTD., AUROBINDO PHARMA USA, INC.,
DR. REDDY'S LABORATORIES, INC., DR. REDDY'S
LABORATORIES, LTD., EMCURE
PHARMACEUTICALS LTD., HERITAGE
PHARMACEUTICALS INC., GLENMARK
PHARMACEUTICALS INC., USA, GLENMARK
PHARMACEUTICALS LIMITED, HETERO USA,
INC., HETERO LABS LIMITED UNIT-V, HETERO
LABS LIMITED, MYLAN PHARMACEUTICALS,
INC., PRINSTON PHARMACEUTICAL INC.,
STRIDES GLOBAL PHARMA PRIVATE LIMITED,
STRIDES PHARMA, INC., TORRENT PHARMA
INC., TORRENT PHARMACEUTICALS LTD.,
ZYDUS PHARMACEUTICALS (USA) INC., CADILA
HEALTHCARE LTD., APOTEX INC., APOTEX
CORP., SUN PHARMACEUTICAL INDUSTRIES,
LTD., SUN PHARMACEUTICAL INDUSTRIES INC.,
SUN PHARMA GLOBAL FZE,
Defendants
HEC PHARM CO., LTD., HEC PHARM USA INC.,
Defendants-Appellants
______________________
2021-1070
______________________
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2 NOVARTIS PHARMACEUTICALS v. ACCORD HEALTHCARE INC.
Appeal from the United States District Court for the
District of Delaware in No. 1:18-cv-01043-KAJ, Circuit
Judge Kent A. Jordan.
______________________
LINN, Circuit Judge, dissenting.
The majority, while recognizing that written descrip-
tion support is a fact-based inquiry based on the under-
standings of a person of ordinary skill in the art, and while
ultimately recognizing that the standard for negative limi-
tations is the same as for any other limitation, nonetheless
applies a heightened written description standard to the
facts of this case in requiring not only a “reason to exclude”
but a showing that the negative limitation in question was
“necessarily excluded.” In doing so, the majority character-
izes the district court’s fact finding as clearly erroneous and
concludes that written description support for the no-load
limitation is lacking. In my opinion, the district court ap-
plied the correct standard and found ample support in the
written description for the no-load limitation. For these
reasons, I respectfully dissent.
I
A specification that “reasonably conveys to those
skilled in the art that the inventor had possession of the
claimed subject matter as of the filing date” has adequate
written description of the claimed invention. Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010). “[T]he test requires an objective inquiry into
the four corners of the specification from the perspective of
a person of ordinary skill in the art.” Id. Our case law
makes clear that “[c]ompliance with the written descrip-
tion requirement is essentially a fact-based inquiry that
will ‘necessarily vary depending on the nature of the inven-
tion claimed.’” Enzo Biochem, Inc. v. Gen-Probe Inc., 323
F.3d 956, 963 (Fed. Cir. 2002) (quoting Vas-Cath Inc. v.
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NOVARTIS PHARMACEUTICALS v. ACCORD HEALTHCARE INC. 3
Mahurkar, 935 F.2d 1555, 1562 (Fed. Cir. 1991)). It is well
established that there is no “new and heightened standard
for negative claim limitations.” Inphi Corp. v. Netlist, Inc.,
805 F.3d 1350, 1356 (Fed. Cir. 2015). While the court in
Santarus, Inc. v. Par Pharmaceutical, Inc. observed that
“[n]egative claim limitations are adequately supported
when the specification describes a reason to exclude the rel-
evant limitation,” we did not hold that a specification must
describe a reason to exclude a negative limitation. 694 F.3d
1344, 1351 (Fed. Cir. 2012). A specification that describes
a reason to exclude the relevant negative limitation is but
one way in which the written description requirement may
be met.
The majority begins its opinion with the recognition
that a written description’s silence about a negative claim
limitation, while serving as a “useful and important clue,”
is not necessarily dispositive of whether that limitation is
adequately supported. Maj. at 6. I agree. The majority
concludes with a citation to Ariad for the proposition that
“as with positive limitations, the disclosure must only ‘rea-
sonably convey [] to those skilled in the art that the inven-
tor had possession of the claimed subject matter as of the
filing date.’” Maj. at 12 (citing Ariad, 598 F.3d at 1351).
With that, I also agree. But the majority in its analysis
employs the heightened standard of “necessary exclusion”
against which to assess the district court’s fact findings in
this case and uses that standard to conclude that the dis-
trict court clearly erred. With that, I cannot agree. While
a showing of “necessary exclusion” would most certainly
provide written description support for a negative limita-
tion, it is not and should not be a requirement in every case.
As noted above and as Ariad makes clear, the critical ques-
tion in assessing written description support for a negative
limitation is the same as for any other limitation: “Does
the written description reasonably convey to those skilled
in the art that the inventor had possession of the claimed
subject matter as of the filing date?” See Ariad, 598 F.3d
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4 NOVARTIS PHARMACEUTICALS v. ACCORD HEALTHCARE INC.
at 1351. How that question is resolved depends on the facts
of each case, assessed through the eyes of the skilled arti-
san. Our precedent makes that clear.
For example, in Santarus, we found that claims di-
rected to a method of treatment with a pharmaceutical
composition containing no sucralfate were adequately de-
scribed by a specification that explained that, although su-
cralfate is “possibly the ideal agent for stress ulcer
prophylaxis,” it was known to have occasional adverse ef-
fects. 694 F.3d 1344, 1350–51 (Fed. Cir. 2012). In Santa-
rus, as in this case, there was expert testimony providing a
person of ordinary skill’s understanding of the patent spec-
ification. See id. at 1351. The expert testimony in Santa-
rus showed that “a person of ordinary skill in this field . . .
would have understood from the specification that disad-
vantages of sucralfate may be avoided by the [claimed] for-
mulation.” Id.
In In re Bimeda Research & Development Ltd., we held
that a claim that excluded a specific anti-infective, acrifla-
vine, was not adequately described by a disclosure that was
inconsistent with the exclusion of acriflavine but not other
anti-infectives or antibiotics. 724 F.3d 1320, 1324 (Fed.
Cir. 2013). The claim at issue in Bimeda was directed to a
method of preventing mastitis in dairy cows by sealing the
teat canal of a cow’s mammary gland with a seal formula-
tion that excludes acriflavine. Other claims in the same
patent excluded all anti-infective agents. We noted that
the patent repeatedly distinguished the invention as able
to prevent mastitis without the use of antibiotics. Based
on the written description’s consistent description of the in-
vention’s non-antibiotic approach to preventing mastitis,
we concluded that the patent’s disclosure was “inconsistent
with a claim which excludes acriflavine, but not the pres-
ence of other anti-infectives or antibiotics.” Id. (citation
and quotation marks omitted). We did not require that the
specification describe a reason to exclude acriflavine spe-
cifically; rather, we found only that a negative limitation
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NOVARTIS PHARMACEUTICALS v. ACCORD HEALTHCARE INC. 5
which is inconsistent with the disclosure is not adequately
described.
In Inphi, we confirmed that the written description re-
quirement is satisfied where “‘the essence of the original
disclosure’ conveys the necessary information—‘regardless
of how it’ conveys such information, and regardless of
whether the disclosure’s ‘words [a]re open to different in-
terpretation[s].’” 805 F.3d at 1354 (quoting In re Wright,
866 F.2d 422, 424–25 (Fed. Cir. 1989) (citation and internal
quotation marks omitted, emphasis in Inphi)). We ex-
plained that “Santarus simply reflects the fact that the
specification need only satisfy the requirements of § 112,
paragraph 1 as described in this court’s existing jurispru-
dence.” Id. at 1356. And we noted that the “‘reason’ re-
quired by Santarus is provided, for instance, by properly
describing alternative features of the patented invention.”
Id. (citing In re Johnson, 558 F.2d 1008, 1019 (C.C.P.A.
1977)).
In Inphi, we found that substantial evidence supported
the Patent Trial and Appeal Board’s (“Board”) finding that
a negative limitation which had been added during prose-
cution (“DDR chip selects that are not CAS, RAS, or bank
address signals”) was adequately described by an original
specification which did not expressly articulate a reason to
exclude RAS and CAS signals. We found the Board’s deci-
sion was supported by evidence of (1) standards set by the
Joint Electron Device Engineering Council, a global stand-
ard-setting body for the microelectronics industry, incorpo-
rated by reference in the patent, which specify that DDR
signals, including CAS, RAS, CAS, and bank address sig-
nals, are distinct from each other; (2) a table in the specifi-
cation which excludes RAS and CAS signals; and (3)
various passages from the specification, including a figure
which distinguishes chip select signals, command signals
(including RAS and CAS signals) and bank address signals.
We concluded that the specification’s disclosure of
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6 NOVARTIS PHARMACEUTICALS v. ACCORD HEALTHCARE INC.
alternative features was sufficient to satisfy the written de-
scription standard for the negative limitation. Id. at 1357.
In Nike, Inc. v. Adidas AG, we reiterated that Santarus
did not create a heightened standard for written descrip-
tion of negative limitations. 812 F.3d 1326, 1348 (Fed. Cir.
2016), overruled on other grounds by Aqua Prods., Inc. v.
Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc). We stated
that negative limitations, like all other limitations, are
held to “the customary standard for the written description
requirement.” Id. In Nike, we found a limitation of “flat
knit edges,” which Adidas characterized as a negative lim-
itation, was adequately described by three figures in the
specification depicting the claimed textile element which
Nike’s expert opined could be made using flat knitting in
contrast to another figure’s textile element which is formed
using a circular knitting machine. Id. at 1348–49.
The central tenet of our written description jurispru-
dence—that the disclosure must be read from the perspec-
tive of a person of skill in the art—further recognizes that
the disclosure need not describe a limitation in haec verba.
See, e.g., All Dental Prods., LLC v. Advantage Dental Prod.,
Inc., 309 F.3d 774, 779 (Fed. Cir. 2002) (citing Eiselstein v.
Frank, 52 F.3d 1035, 1039 (Fed. Cir. 1995) (“[T]he failure
of the specification to specifically mention a limitation that
later appears in the claims is not a fatal one when one
skilled in the art would recognize upon reading the specifi-
cation that the new language reflects what the specifica-
tion shows has been invented.”); see also Ariad, 598 F.3d at
1351.
The Manual of Patent Examining Procedure (“MPEP”)
similarly provides for written description in various forms.
In addition to stating that the “mere absence of a positive
recitation” is not enough, the MPEP also correctly states
that no specific form of disclosure is required and provides
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NOVARTIS PHARMACEUTICALS v. ACCORD HEALTHCARE INC. 7
for implicit written description. 1 MPEP § 2173.05(i) states
that “a lack of literal basis in the specification for a nega-
tive limitation may not be sufficient to establish a prima
facie case for lack of descriptive support.” And MPEP
§ 2163 states that “newly added claims or claim limitations
must be supported in the specification through express, im-
plicit, or inherent disclosure.” MPEP § 2163 (emphasis
added). What is critical is how a person of skill in the art
would read the disclosure—not the exact words used.
In other words, context and the knowledge of those
skilled in the art matter. And, as the Supreme Court has
made clear, when assessing what the written description
reveals to a skilled artisan, common sense also matters.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)
(holding that, in an obviousness analysis, “[r]igid preven-
tative rules that deny factfinders recourse to common
sense, however, are neither necessary under our case law
nor consistent with it”).
II
Here, the district court conducted “an objective inquiry
into the four corners of the specification from the perspec-
tive of a person of ordinary skill in the art” and found suf-
ficient written description in the EAE model and the
Prophetic Trial. J.A. 37 (citing Ariad, 598 F.3d at 1351).
The district court found that the “Prophetic Trial describes
giving a ‘daily dosage of 0.5 . . . mg’ fingolimod to treat
RRMS, started ‘initially.’” J.A. 26 ¶ 62 (quoting ’405 patent
col. 11 ll. 8–13). The court found, crediting expert testi-
mony, that, “[i]f a loading dose were directed, the Patent
would say that a loading dose should be administered ‘ini-
tially.’” J.A. 26 ¶ 62 (citing J.A. 23334–35 (Tr.
1 I cite the MPEP, not because the court is bound by
it but because I find its reasoning informative and persua-
sive.
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8 NOVARTIS PHARMACEUTICALS v. ACCORD HEALTHCARE INC.
756:16–757:8); J.A. 23441–42 (Tr. 863:22–864:18)). The
district court thus made the unremarkable, and factually
supported, determination that “starting with a daily dose
plainly implies that there is no loading dose.” J.A. 27. Sim-
ilarly, the district court found that the “EAE example dis-
closes a dosing regimen which does not involve a loading
dose.” J.A. 27 ¶ 64 (citing J.A. 23345 (Tr. 767:3–5); J.A.
22793 (Tr. 215:16–21)). The district court held that the de-
scription in the specification of administration of a daily
dose “would tell a person of skill that loading doses are ex-
cluded from the invention.” J.A. 26 ¶ 61. The court also
found that “[a] loading dose is necessarily a higher-than
daily dose.” J.A. 27 ¶ 63 (Tr. 766:4-766:6). Finally, the
court found that, while the patent describes alternate dos-
ing regimens, such as “intermittent dosing,” it does not de-
scribe administering those regimens with loading doses.
J.A. 27 ¶ 65. Thus, the district court concluded, “[t]he EAE
model and the Prophetic Trial . . . indicate to a person of
ordinary skill that the claimed invention did not include
the administration of a loading dose.” J.A. 37–38. The
cited passages of the specification provide clear disclosure
of a dosing regimen that is not dependent upon or subject
to the administration of a loading dose.
The majority finds that the word “initially” “speaks to the
initial length of treatment not the dosage with which treat-
ment begins.” Maj. at 7–8. Here, the district court found that
the “Prophetic Trial describes giving a ‘daily dosage of 0.5
. . . mg’ fingolimod to treat RRMS, started ‘initially.’” J.A.
26. While other interpretations of the word “initially” might
be reasonable, the language, used in context, also supports
the district court’s finding that the written description dis-
closes excluding a loading dose. We are not free to substitute
our own factual findings for those of the district court absent
clear error because “a district court judge who has presided
over, and listened to, the entire proceeding has a compara-
tively greater opportunity to gain the necessary ‘familiarity
with specific scientific problems and principles,’ . . . than an
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NOVARTIS PHARMACEUTICALS v. ACCORD HEALTHCARE INC. 9
appeals court judge who must read a written transcript or
perhaps just those portions referenced by the parties.” Teva
Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 319 (2015)
(quoting Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339
U.S. 605, 610 (1950)).
The majority asserts that the disclosure of a daily dos-
age cannot amount to a disclosure that there can be no
loading dose, because such a finding is at odds with the
prosecution history and the fact that the examiner allowed
the claims only after the no-load limitation was added.
Maj. at 10. According to the majority, if reciting a “daily
dosage” necessarily excluded a loading dose, there would
have been no reason to add the no-dose limitation. Id. at
10:19-22. But Novartis, in adding the no-load limitation
was doing no more than what applicants regularly do to
secure allowance in making explicit that which was im-
plicit prior to the amendment. There is no basis to read
more into the prosecution history and certainly no basis to
negate the clear disclosure of a “daily dosage” and the ex-
pert testimony describing the understanding of that ex-
pression to skilled artisans.
The majority asserts that “the question is not whether
the patentee intended there to be a loading dose; the ques-
tion is whether the patentee precluded the use of a loading
dose.” Maj. at 11. I submit that the question posed by the
majority is misstated. The question is not whether the pa-
tentee precluded the use of a loading dose but whether the
claim language that precludes the administration of a load-
ing dose is supported by the written description passages
that disclose the effective administration of nothing more
than a “daily dose.” In context, that disclosure, according
to the testimony of the Novartis’s experts, implies the ab-
sence of a loading dose to the ordinarily skilled artisan.
That is all that is required.
Finally, the majority finds significant tension between
the district court’s finding that the specification’s
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10 NOVARTIS PHARMACEUTICALS v. ACCORD HEALTHCARE INC.
disclosure excludes a loading dose, but the Kappos 2006 ab-
stract does not. Maj. at 9. I see no tension or legal incon-
sistency in the district court’s treatment of the Kappos
2006 abstract. As the court explained, Kappos was an ab-
stract with no presumption of enablement or completeness,
and it in any event did not include the animal trials that
form an important part of Novartis’s arguments with re-
spect to the ’405 patent. As importantly, the district court
also found no evidence that Kappos 2006 was publicly
available before the priority date because there was no ev-
idence of public access. J.A. 28.
For all these reasons, I respectfully dissent.