if glycosylation was not desired since “eukaryotic expression cells usually glycosylate proteins
in some way” (Exh. 2028 at ¶ 17).
The EPO application:
Glaxo states that “[i]t is also interesting to note that the claims in Cabilly’s corresponding
European Patent [Exhibit 2057] were eventually restricted to non-glycosylated antibodies”
(Paper 49 at 23). Glaxo has not sufficiently explained to us how the record before the European
Patent Office (EPO) and the present record are alike. Therefore, we cannot determine that the
situation presented to the EPO is the same as the present situation. For example, we do not know
if the EPO based its decision (see Exh. 2047) on prior art that is not before us. At any rate,
despite any similarities between the situation before the EPO and the present one, we are not
bound by the decision of the EPO.
2. The original claims and examples:
Glaxo argues that the Cabilly applications20 do not describe subject matter within the
scope of proposed Count 2 as part of its invention. Glaxo points to portions of the introduction,
portions of the summary of the invention, and the examples within the Cabilly applications.
Glaxo points out that the involved Cabilly claims were not part of the original disclosure of the
‘419 application.
In support of its arguments, Glaxo points to the testimony of Dr. Youle (Exh. 2012) and
Dr. Vitetta (Exh. 2028). According to Glaxo, Dr. Youle and Dr. Vitetta reach similar
20 In its preliminary motions 3 and 5, Glaxo at times directs us to Exhibit 2006 (the
‘457 application) as the “Cabilly application”. We have looked instead to Exhibit 2102 (the ‘419
application) or the 2103 (the ‘611 application) as appropriate, since it is apparent to us that is
what Glaxo intended.
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