Glaxo’s preliminary motions involving Cabilly’s written description
32. Glaxo has filed its preliminary motion 3 moving for judgment that the Cabilly
involved claims are unpatentable based on a lack of written description under 35 USC § 112, ¶ 1.
33. Glaxo acknowledges that the involved ‘611 Cabilly application is essentially the
same as Cabilly’s ‘419 application (Paper 203 at 14). When we wish to refer to the ‘611 and the
‘419 application collectively, we will refer to the “Cabilly applications”.
34. Glaxo makes substantially the same arguments in its preliminary motion 3 as it
does in that portion of its preliminary motion 5 urging that Cabilly should not be accorded
priority benefit of the ‘419 application for proposed Count 2.
35. In particular, Glaxo argues that the ‘419 disclosure does not contain a written
description of an embodiment of the invention falling within Count 1. We note that Glaxo does
not argue that the ‘419 disclosure lacked enablement for an embodiment within the scope of
proposed Count 2 (Paper 51 at 17).5
Glycosylation by CHO cells
36. Glaxo argues that neither of the Cabilly applications describes antibodies that are
glycosylated by CHO cells (Paper 49 at 11-12 and Paper 51 at 21-25).
5 We also note the difference between Glaxo’s position in its preliminary motion 1
(attacking the priority benefit accorded to Cabilly for it’s ‘457 application) and Glaxo’s position
in its preliminary motion 5. In its preliminary motion 1, Glaxo argues that the ‘457 disclosure
lacks written description for an embodiment within the scope of Count 1 and that Cabilly’s ‘457
disclosure “does [did] not enable one skilled in the art to make and/or use the invention of the
Count or an embodiment of an invention falling within the Count without undue
experimentation” (Paper 47 at 4). Our understanding is that the difference in Glaxo’s position is
based upon a change in the level of skill in the art between the filing date of the ‘457 application
and the filing date of the ‘419 application (see, e.g., Exh. 1120 at 75:18-76:3 and Paper 203 at
16-17).
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