Scripps Clinic Research Foundation v. Genentech Inc Scripps Clinic & Research Foundation (1991) (U.S. Court of Appeals)

Case Description

The Federal Circuit remanded for trial (further clarification of facts) to the district court a number of motions for summary judgment regarding the validity and the infringement of certain product claims and product-by-process claims. The Federal Circuit inter alia decided that in litigation (concerning patent infringement and validity), patent claims must be construed in a similar manner as under patent prosecution (concerning the grant of a patent). The Court also clarified further the extent to which open ended claims are admissible under the enablement (disclosure) requirement, the role of prior art extrinsic evidence in anticipation (novelty test), the limits of claims construction, and the purpose of the so-called “reverse doctrine of equivalents”.

Decision Year
Pre-grant flexibilities