Summary: CAFC affirms claim construction and finds adequate written description.

Case: Tobinick v. Olmarker, No. 2013-1499 (Fed. Cir. May 19, 2014) (precedential). On appeal from the Patent Trial and Appeal Board in Interference No. 105,866. Before Lourie,Reyna, and Wallach.

Procedural Posture: Applicant appealed the Board’s claim construction and decision finding the application lacked written description support for the interference count. CAFC affirmed the Board’s claim construction and reversed the decision on written description.

  • Claim Construction: Construing patents related to drug treatments for spinal nerve injuries, the Board correctly construed the limitation “wherein the antibody is administered locally” to mean administered “directly to the site where it is intended to act, that is, to the location where the nucleus pulposus is causing the symptoms of the nerve disorder.” Contrary to the applicant’s argument, this construction did not improperly exclude administration “adjacent to disc herniation” because a herniated disc can injure sites adjacent to the disc and thus may be where the antibody is “intended to act.”
  • Written Description: The Board erred in finding the application lacked written description support for the term “administered locally.” Although the specification defined a type of administration as including both local and non-local techniques, it showed that the applicant had possession of at least one embodiment that met the construction of local administration.