Magistrate Judge Burke Opines on 112 Support Required for Methods of Making Product Claims

November 25, 2015 – Delaware District Court Magistrate Judge Burke recommended granting plaintiff W.L. Gore’s motion for summary judgment that its stent graft patent satisfied the written description and enablement requirements of 35 U.S.C. § 112.  The magistrate judge found that “”[T]he law does not require enablement of unclaimed alternative methods when a claim is directed to a physical structure and makes no reference to limits on the method of making that structure,” and further found that “When a claim is directed to a product … the written description requirement does not demand that all methods of making the product be described in the specification; instead, one way of making the product is sufficient.”

Magistrate Judge Burke also recommended denying defendant C.R. Bard’s MSJ on willfulness, finding that that Bard’s defenses were “rather fact-specific” and thus better resolved by weighing testimony and trial evidence.

The patent-in-suit is U.S. Patent No. 5,735,892, titled “Intraluminal Stent Graft.”  The case is captioned W.L. Gore & Associates Inc. et al v. C.R. Bard Inc., Case No. 1-11-cv-00515, in the U.S. District Court for the District of Delaware.

By: Sean C. McDonagh