A district court judge granted UCB, Inc.’s (plaintiff) motion for summary judgment that its Cimzia® product, a humanized monoclonal antibody approved for the treatment of rheumatoid arthritis, psoriatic arthritis, active ankylosing spondylitis, and Crohn’s disease, does not infringe a patent owned by Yeda Research and Development Co. (defendant). In its motion, plaintiff argued that the term “monoclonal antibody”, which was used in the asserted claims, does not include humanized antibodies like Cimzia® because the technology to make humanized antibodies did not exist when the asserted patent was filed. In response, defendant argued that the plain meaning of “monoclonal antibody” is broad enough to include humanized antibodies. In granting plaintiff’s motion, the court first found that Cimzia® does not literally infringe the asserted claims because the term “monoclonal antibody” is limited to an antibody made through hybridoma and did not extend to chimeric or humanized monoclonal antibodies. In reaching this conclusion, the court explained that “[i]f the embodiment disclosed in the specification is the only embodiment which could have been understood to fall within the claim terms at the time of filing, then interpreting the claims to be coextensive with that single embodiment is simply giving the claims their correct meaning. In other words, [defendant’s] argument that the claims cannot be limited only to disclosed embodiments fails when no other embodiments existed at the time of filing.”

The court also rejected defendant’s argument that Cimzia® infringes under the doctrine of equivalents (DOE) because a humanized antibody is equivalent to an antibody made via hybridoma. In rejecting that argument, the court noted that during prosecution the defendant cancelled claims directed to humanized or chimeric antibodies and, therefore, were estopped from trying to re-capture that subject matter. The court explained that “[w]hen the USPTO rejected [defendant’s] efforts to claim chimeric and humanized antibodies and [defendant] acquiesced to those rejections, [defendant’s] competitors and interested members of the public were entitled to rely on [defendant’s] actions. Having conceded the correctness of the rejections made by the USPTO, [defendant] cannot now complain that it is estopped from re-capturing that subject matter as an equivalent.”

UCB, Inc. v. Yeda Research and Development Co. Ltd., 1-14-cv-01038, E.D. Va. (Brinkema).