Claim 1 of the ‘146 patent is part of Count 1. Shiokawa will show that claim 1 is
sufficiently described and enabled by each of the earlier-filed applications using the
description of the preferred insecticides.
(Paper No. 74, p. 8). As the disclosure of each of the earlier filed JP and U.S. applications is
substantively identical to that of the ‘146 patent, Shiokawa has focused on demonstrating that the ‘146
patent contains a sufficient written description of subject matter of Count 1.
As the moving party, Shiokawa bears the burden of proof. Shiokawa, however, has failed to
meet its burden. Specifically, Shiokawa has failed to demonstrate that the ‘146 patent, and by
extension its earlier JP and U.S. applications, constitutes a constructive reduction to practice of the
subject matter of the count.
The ‘146 patent does not explicitly describe a 1,3,5-oxadiazine compound. Specifically, the
‘146 does not mention a 1,3,5-oxadiazine compound nor does the ‘146 patent depict a 1,3,5-
oxadiazine structure. The ‘146 patent does, however, describe a genus of insecticidal heterocylic
compounds that broadly encompasses Shiokawa’s claimed 1,3,5-oxadiazines. To satisfy the written
description requirement the ‘146 patent must direct or guide one skilled in the art from the genus to the
particularly claimed 1,3,5-oxadiazine subgenus. Fujikawa, 93 F.3d at 1571,
39 USPQ2d at 1905.
Using the blazemark metaphor of Ruschig, the ‘146 patent provides a map setting forth the
boundaries of a forest. The ‘146 patent map describes numerous trails upon which the reader, one of
ordinary skill in the art, may travel. The ‘146 patent even marks many of areas of the forest as
“preferred.” Additionally, the map identifies many individual trees and provides both general and
specific guidance as to which paths the reader may follow to arrive at those trees. The map, however,
does not identify the specific location of the claimed 1,3,5-oxadiazines. Yet, Shiokawa alleges that the
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