Regents of the University of California v. Eli Lilly Co.
119 F.3d 1559 (Fed. Cir. 1997)
Cal scientists figured out a way
to isolate a piece of DNA in rats and use it to create insulin. They
filed a patent.
The patent was broad and
claimed the process for all animals, including humans, even though they
had only experimented in rats.
When Lilly began making human
insulin from human DNA they isolated, Cal sued for infringement.
Lilly argued that Cal's
patent was not valid under 35 U.S.C. §112 because the written description wasn't detailed to
support all of the claims.
The written description did not detail the piece of DNA in humans
that could be used to make human insulin.
The Trial Court found for
Lilly. Cal appealed.
The Appellate Court affirmed.
The Appellate Court found
that an adequate written description
of DNA requires a precise definition, such as by structure, formula,
chemical name, or physical properties.
So basically, the Court
found that when talking about DNA, you have to specifically spell out
the genetic code.
Since Cal's patent did not
disclose the sequence of human insulin-producing DNA in the written
description, Cal could not make a claim for it.