“The problem Juno poses for patent practice at large is that Juno ultimately ignores predictability in the art when requiring disclosure of…exemplary shapes or characteristics and can be broadly applied regardless of the predictability in the art.”
The Federal Circuit’s decision in Juno v. Kite undermines effective prosecution practice and ultimately patent enforcement. The Juno panel held that to satisfy the written description requirement, a patent needs to demonstrate to a skilled artisan that the inventors possessed and disclosed in their filing the full scope of every genus being claimed. By denying rehearing to the Federal Circuit’s 2021 decision on the scope of the written description requirement, Juno v. Kite demonstrates how once again, the courts never consider anything from a prosecutor’s point of view.
Here’s why Juno v. Kite is bad for patent prosecution practice.
Reason 1: The Juno Panel’s Reasoning Degrades the Long-Established Claiming Practice of Capturing the Broadest Reasonable Scope Upon Original Presentation
If you have ever conducted an inventor’s interview prior to application drafting, you will quickly observe that inventors tend to focus on the specific and unique details of the problem that directed them to their ultimate invention. Inventors do not think in terms of exclusionary rights or how the system, method or apparatus will be made, used or sold. When conceiving their invention, they do not devise all the different or alternative ways that a competitor can easily accomplish the same objective. They do not imagine how different parts, components or steps can be executed by different parties such that no single party literally infringes every component of a claim. It is and has always been up to the drafting patent attorney to draft claims with these issues in mind in order to meaningfully protect the inventor’s invention, especially upon original presentation of the claims as most examiners would prohibit broadening the original scope after filing.
Take for example, the necessary use of functional language for apparatus claims in many instances. Examiners often find applicants overreaching with their use of functional language such as “configured to”, always giving more patentable weight to positive structural recitation that enables the function. But prosecutors do not claim in terms of function because we enjoy it – it usually gives us way more trouble during examination. Prosecutors claim via function because certain parts or structures can be made or sold separately and we do our best to avoid positively claiming elements that can be made or performed by different parties. This is an issue that inventors do not think about when conceiving their invention, and the Juno panel ignores the breadth of what typical inventors can conceive and what is necessary for meaningful claiming.
Reason 2: Juno’s Heightened Written Description Requirement Enhances Uncertainty During Examination and Client Counseling
When a client approaches a patent attorney on the matter of infringement or non-infringement of a competitor’s patent, it has been long-standing practice to opine on both literal infringement and also under the doctrine of equivalents. If a claim recited a “fastening means” and disclosed only a screw as an embodiment, normally you would tell your client that making a bolt or a clip will not be sufficient to circumvent the doctrine of equivalents.
Now, here comes Juno, which held that “demonstrating the full scope of every genus means conveying the characteristics that would enable” an antibody variable element that allow them to bind to particular target antigens. In this case, the panel looked for disclosure of exemplary amino acid sequence or shape of the antibody variable element. Applying Juno’s reasoning to the “fastening means” example, it’s now unclear whether “fastening means” should be restricted to just a screw as it is the only embodiment disclosed. If an application is examined under the Juno doctrine, the examiner can construe the term under the broadest reasonable interpretation when applying the prior art, and then restrict the applicant to just claiming a screw under Juno’s written description requirement.
The problem Juno poses for patent practice at large is that Juno ultimately ignores predictability in the art when requiring disclosure of such exemplary shapes or characteristics and can be broadly applied regardless of the predictability in the art. This always happens when a biologics decision gets applied to the examination of non-biopharmaceutical claims, which occurs during examination without any clear inhibition. More problematic is the panel’s own disregard for the predictability of the art in its decision.
The panel ignored Juno’s expert opinion, which basically testified to the predictability in the art. The expert testified that the two exemplary scFvs are representative “because [scFvs] all do the same thing. They bind to the antigen.” The expert also testified that scFvs have “known structural commonalities, similarities”, explaining that “scFvs have the same general, common structure consisting of a variable region derived from the light chain of an antibody and a variable region derived from the heavy chain of an antibody, where these two portions are connected with a linker.” Instead, the panel conclusory held that the art field at issue was of the unpredictable nature and that the expert’s opinion on predictability was simply “too general.”
The extensive scope of decisions like Juno are rarely ever construed with the facts of the specific case in mind once it has been issued, and now we all await the fallout.
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