In the summer of 2009, when Abbott Laboratories was slapped with the biggest patent infringement jury verdict in U.S. history, Abbott’s lawyer, William Lee of Wilmer Cutler Pickering Hale and Dorr, told us to wait for the U.S. Court of Appeals for the Federal Circuit to weigh in. Abbott was confident, he said, about the record it had established at trial in Marshall, Tx., federal district court. Even after Judge T. John Ward denied Abbott’s post-trial motions for judgment as a matter of law against the patent infringement claims by Johnson & Johnson’s Centocor Ortho Biotech unit, Lee remained optimistic about Abbott’s appellate chances.

That optimism proved well founded Wednesday. In a blockbuster 21-page ruling, a three-judge federal circuit panel reversed Judge Ward’s JMOL ruling, finding that Centocor’s patent on a rheumatoid arthritis treatment involving human antibodies is invalid under the written description requirement. The opinion, written by Judge Sharon Prost for a panel that also included Judges William Bryson and Raymond Clevenger III, orders judgment for Abbott on invalidity grounds.

In a complex discussion of the very distinct processes by which Abbott and Centocor developed their competing arthritis treatments, the Federal Circuit judges noted that Centocor’s infringement claim relied on its 1994 filings with the U.S. Patent & Trademark Office. But those filings, the appellate judges concluded, did not actually describe a process for producing the human antibody later patented by Abbott and marketed as the rheumatoid arthritis drug Humira.

“Because Centocor had not invented a fully-human, high affinity, neutralizing, A2 specific antibody in 1994, a reasonable jury could not conclude that it possessed one,” the Federal Circuit opinion says. “In view of the lack of written description in the specification for fully-human, A2 specific, neutralizing, high affinity antibodies, Centocor’s argument that an inventor need not physically make an invention to claim it misses the mark. Indeed, we have repeatedly indicated that the written description requirement does not demand either examples or an actual reduction to practice. What it does demand is that one of skill in the art can ‘visualize or recognize’ the claimed antibodies based on the specification’s disclosure. In other words, the specification must demonstrate constructive possession, and the [Centocor] patent’s specification fails to do so….The actual inventive work of producing a human variable region was left for subsequent inventors to complete.”

“The core issue was whether you could claim a patent on something you didn’t invent,” a euphoric Lee told us Wednesday. The appellate panel gave him and Centocor counsel Dianne Elderkin of Akin Gump Strauss Hauer & Feld a more than an hour apiece–as opposed to the usual 15 minutes–to address that issue at oral arguments. Lee said the Abbott team believed its trial record clearly established that Abbott invented the human antibody before Centocor.

Moreover, he said, Federal Circuit rulings since the Centocor verdict, such as Ariad Pharmaceuticals v. Eli Lilly, have underscored the importance of the written description requirement. “I was almost 100 percent sure [the verdict would be reversed] after oral argument,” Lee told us.

We asked Lee whether the now-erased jury verdict against Abbott had shaken his faith in the jury system. He said it hadn’t. “I think both sides presented the evidence well,” he told us in an e-mail. “From my vantage point, the jury composition led to a result that was not justifiable.” If the case were tried again, he said, the result would likely be a finding that Centocor’s patent is invalid, just as the Federal Circuit concluded.

We left a message with Centocor counsel Elderkin of Akin Gump but didn’t hear back. J&J sent us this e-mail statement: “We are disappointed by the decision. We are considering whether to ask for reconsideration by the panel or by the court of appeals as a whole.”