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Continuation Drafter
Continuation practice · Tier B

The parent's own publication became the reference

Indivior v. Dr. Reddy's

A range assembled by adding up table entries after the fact is not a described range. And when the family loses its priority date, the reference that kills it is usually the family's own published parent.

How to read the ledger below. Each numbered point carries the kind of evidence behind it. ESTABLISHED is stated in the authority's own text, with a locator. IMPLEMENTED is the rule as the authority actually applied it. OBSERVED is carried by a source outside this one. ASSUMED is the drafter's inference, flagged as such and not the authority speaking. Quotations are checked against a cached copy of the primary source by script.

In one paragraph

The Federal Circuit affirmed the Board in the Indivior inter partes review appeal on 24 November 2021. Polymer weight percentage ranges added by amendment to a fifth continuation had no written description support in the 2009 parent application, which stated a lower bound and gave tables of specific formulations but never stated the ranges, so the claims lost the 2009 date and were anticipated by the February 2011 publication of that same parent application. On the cross appeal the court affirmed the opposite result for a claim reciting one specific value rather than a range, and said openly that one might see some inconsistency between the two. Judge Linn dissented in part.

Reader summary

The patent was the fifth continuation of a 2009 application. During prosecution, polymer weight-percentage ranges were added to the claims by amendment. The parent application never stated those ranges. It stated a lower bound, some alternative lower bounds, an express statement that any desired level of polymer could be used, and two tables of specific formulations whose polymer components could be added up to reach the endpoints later claimed.

The Board held that was not enough, so the claims were not entitled to the 2009 date, so the February 2011 publication of that same parent application was prior art, and it anticipated. The Federal Circuit affirmed all of it.

Two things make this record useful beyond its facts. The first is the mechanism: nobody found a third-party reference. The patent was destroyed by the publication of its own parent, which is what a lost priority date does to a long family in almost every case.

The second is the cross-appeal, which came out the other way. Claim 8 recited a single value, about 48.2 wt %, derivable by the same addition the court had just called cobbling together numbers after the fact. The court affirmed that too, out of deference to the Board's fact-finding, and openly acknowledged that one might see some inconsistency between the two results. That candour is the honest summary of this area: written description on ranges is fact-finding reviewed for substantial evidence, and the same disclosure can support a point and not a range.

Judge Linn dissented in part, and his objection is recorded in Tensions.

Why this matters when you are drafting

A claimed range needs a stated range. Claims 6 through 9. Endpoints derivable by summing table columns are examples, not a described range. If a continuation will claim a bounded range, the parent should state that range, or at minimum state both endpoints as endpoints.

Claim 7's first sentence is a drafting instruction. Expressly claiming the range in the parent could have constituted support. A parent claim set is cheap breadth insurance for ranges the family may want later.

The reference that kills you is your own parent. Claim 3. Where a family publishes, losing priority hands the challenger a reference that describes the invention exactly, because it is the invention. There is no argument about what it teaches.

Know where the fallback date lands. Claim 5. Losing the earliest link does not push the claim to its own filing date; it pushes it to the earliest application in the chain that does support it. In a long family that intermediate date can still precede some art and follow other art, and it has to be worked out application by application.

An open-ended teaching in the parent is a liability for a narrower later claim. Claim 11. Boilerplate saying any desired amount may be used reads as breadth at drafting time and as absence of a described bound at litigation time.

A single value and a range are not the same ask. Claims 13 and 14. Where the parent's tables yield a specific number, a claim to that number is a materially easier case than a claim to the interval between two such numbers. That is a live drafting choice in a continuation.

Do not take a rule about ranges from this case. Claim 12. The court says explicitly that no case controls, and its own two halves point in different directions.

What the authority establishes

  1. [ESTABLISHED, the posture and the family] "The '454 patent issued as the fifth continuation of U.S. Patent Application 12/537,571" filed in August 2009, and "This appeal involves the question whether Indivior can get the benefit of that 2009 filing date for the claims at issue." (P. 2.)
  1. [ESTABLISHED, what was added and when] DRL alleged that "the polymer weight percentage limitations, added to the claims by amendment, do not have written description support in the '571 application as filed and thus are not entitled to the benefit of its filing date." (P. 2.) Amendment-added limitations are the standard shape of a continuation claim.
  1. [ESTABLISHED, and this is the mechanism worth carrying away] The anticipating reference was "U.S. Patent Publication 2011/0033541" (P. 3.), which the opinion identifies as "the February 10, 2011 publication of the '571 application." (P. 3.) The family's own parent publication.
  1. [ESTABLISHED, the concession that made the case binary] "Indivior did not dispute that, if the '571 application lacked written description of the claims and hence that Myers was deemed prior art, Myers would anticipate claims 1-5 and 7-14." (P. 3.) Priority was the only issue; everything else followed.
  1. [ESTABLISHED, where the date fell back to] The Board found the claims had "an effective filing date of no earlier than June 21, 2013, the date of the '454 patent's next oldest application in the series." (P. 5.) A broken link does not drop you to the filing date of the continuation itself; it drops you to the next application in the chain that does support the claim.
  1. [ESTABLISHED, the test as applied to a range] "In the case of a claimed range, a skilled artisan must be able to reasonably discern a disclosure of that range." (P. 9.) And the words need not appear verbatim: "it is not necessary that the limitations of a claim be set forth in haec verba" (P. 9.), but "the specification must indicate with some clarity what the claim recites." (P. 9.)
  1. [ESTABLISHED, the three findings against claim 1, in the court's own order] The range "was not expressly claimed in the '571 application; if it had been, that could have constituted written description support." (P. 8.) The endpoint values "are not stated in the '571 application. Most importantly, neither is a range of 40 wt % to 60 wt %." (P. 8.)
  1. [ESTABLISHED, why table entries did not supply the range] The table values "do not constitute ranges; they are only specific," particular examples (P. 9.), and "For written description support of a claimed range, more clarity is required." (P. 10.) The court then describes exactly the operation it rejects: "one must select several components, add up the individual values, determine the aggregate percentages, and then couple those aggregate percentages with other examples in the '571 application to create an otherwise unstated range." (P. 10.)
  1. [ESTABLISHED, the phrase this case is remembered for] Assembling the range from the tables "amounts to cobbling together numbers after the fact." (P. 10.)
  1. [ESTABLISHED, the standard stated as a principle] "A written description sufficient to satisfy the requirement of the law requires a statement of an invention, not an invitation to go on a hunting expedition to patch together after the fact a synthetic definition of an invention." (P. 10.)
  1. [ESTABLISHED, a breadth statement in the parent cut against the narrower claim] The parent said the film "may contain any desired level of" polymer, and "That statement is contrary to Indivior's assertion that the level of polymer should be closed" within the claimed bounds. (P. 9.) An open-ended teaching in the parent argues against a bounded claim later.
  1. [ESTABLISHED, and it is the limit on everything above] The court says written description cases are intensively fact oriented and that the cases vary just as ranges do. That sentence is paraphrased rather than quoted because it straddles the page 10 to 11 break and is contiguous nowhere in the extracted text, so no locator can anchor it. It quotes Wertheim as "not creating a rule applicable to all description requirement cases involving ranges" (P. 11.), adding that "Thus, no case, with necessarily varied facts, controls the resolution of the written description issue in this case." (P. 11.)
  1. [ESTABLISHED, the cross-appeal came out the other way, and the court said so plainly] Claim 8 recited a single amount rather than a range, and the court affirmed its validity "out of deference to the Board's fact-finding" (P. 12.), adding "even though one might see some inconsistency between this result and our above holding concerning the principal appeal." (P. 12.)
  1. [ESTABLISHED, the distinction the court drew] Claim 8 survived because it "does not recite a range, but only a specific amount, which can be derived by selection and addition of the amounts of selected, but identified, components". (P. 12.) The same arithmetic that failed for a range succeeded for a point.
  1. [IMPLEMENTED, why the two halves can both stand] Written description is a question of fact reviewed for substantial evidence (P. 6.), so the court is affirming two findings rather than deducing two rules. Claims 12 and 13 make this explicit rather than leaving it to inference, which is unusual and worth relying on.
  1. [ASSUMED, drafter's inference, flagged as such] Claims 3 and 5 together describe the self-destruction pattern in a long family: the longer the chain, the more of it has published, and the closer the fallback date sits to the challenged claim. The opinion does not frame it as a structural risk of continuation practice; it follows from those two claims read against the family history in claim 1.

Quotations, verified against the source

All from the Federal Circuit's opinion. Page locators computed from the docket stamp, which numbers the majority and the separate opinion in one continuous sequence.

  • "The '454 patent issued as the fifth continuation of U.S. Patent Application 12/537,571" (P. 2.)
  • "This appeal involves the question whether Indivior can get the benefit of that 2009 filing date for the claims at issue." (P. 2.)
  • "the polymer weight percentage limitations, added to the claims by amendment, do not have written description support in the '571 application as filed and thus are not entitled to the benefit of its filing date." (P. 2.)
  • "U.S. Patent Publication 2011/0033541" (P. 3.)
  • "the February 10, 2011 publication of the '571 application." (P. 3.)
  • "Indivior did not dispute that, if the '571 application lacked written description of the claims and hence that Myers was deemed prior art, Myers would anticipate claims 1-5 and 7-14." (P. 3.)
  • "an effective filing date of no earlier than June 21, 2013, the date of the '454 patent's next oldest application in the series." (P. 5.)
  • "was not expressly claimed in the '571 application; if it had been, that could have constituted written description support." (P. 8.)
  • "are not stated in the '571 application. Most importantly, neither is a range of 40 wt % to 60 wt %." (P. 8.)
  • "it is not necessary that the limitations of a claim be set forth in haec verba" (P. 9.)
  • "the specification must indicate with some clarity what the claim recites." (P. 9.)
  • "In the case of a claimed range, a skilled artisan must be able to reasonably discern a disclosure of that range." (P. 9.)
  • "That statement is contrary to Indivior's assertion that the level of polymer should be closed" (P. 9.)
  • "do not constitute ranges; they are only specific," (P. 9.)
  • "For written description support of a claimed range, more clarity is required." (P. 10.)
  • "one must select several components, add up the individual values, determine the aggregate percentages, and then couple those aggregate percentages with other examples in the '571 application to create an otherwise unstated range." (P. 10.)
  • "amounts to cobbling together numbers after the fact." (P. 10.)
  • "A written description sufficient to satisfy the requirement of the law requires a statement of an invention, not an invitation to go on a hunting expedition to patch together after the fact a synthetic definition of an invention." (P. 10.)
  • "not creating a rule applicable to all description requirement cases involving ranges" (P. 11.)
  • "Thus, no case, with necessarily varied facts, controls the resolution of the written description issue in this case." (P. 11.)
  • "out of deference to the Board's fact-finding" (P. 12.)
  • "even though one might see some inconsistency between this result and our above holding concerning the principal appeal." (P. 12.)
  • "does not recite a range, but only a specific amount, which can be derived by selection and addition of the amounts of selected, but identified, components" (P. 12.)
  • "the majority cites no authority that written description support for a" (P. 15.)
  • "there is no logical reason why such a disclosure should be required as a strict rule to show possession." (P. 15.)

Tensions and open questions

The court names its own inconsistency and does not resolve it. Claim 13. Both halves are affirmances of Board fact-finding, which is a procedural explanation rather than a doctrinal one. A practitioner cannot tell from this opinion what the law would be on de novo review.

The partial dissent presses exactly that. Judge Linn wrote that "the majority cites no authority that written description support for a" closed range requires disclosure of a closed range rather than discrete values (P. 15.), and that "there is no logical reason why such a disclosure should be required as a strict rule to show possession." (P. 15.) His worked example is a continuation claiming 5 to 10 percent from a parent disclosing 5, 6, 7, 8, 9 and 10 percent expressly, which is exactly the case this record cannot answer.

How many stated values make a range is unanswered. Claim 8 rejects summing table components; the dissent's hypothetical uses expressly stated discrete values. Where between those the line falls is not addressed, and claim 12 says no case controls it.

The interaction with an open-ended teaching is stated but not weighed. Claim 11 treats the any-desired-level sentence as cutting against a bounded claim. Whether such boilerplate alone would defeat support, or only reinforces an already thin record, is not resolved.

What this record does and does not cover

The written-description analysis for the range claims, the cross-appeal on the single-value claim, the anticipation consequence, the fact-dependence passage and the disposition were read end to end, and the partial dissent was read closely enough to state its two objections.

What was NOT read closely, and is therefore outside what this record can support: the chemistry and the table contents, the Board's underlying record, and the parties' full briefing on Nalpropion and Wertheim. This record says nothing about whether the claims were obvious, or about what the Board weighed in reaching its findings. The Board's decision is known here only through this court's account of it.

Currency

This record was verified against its primary source on 2026-08-15. That is a fidelity check: the quotations, locators and attribution are accurate to that source. Whether the authority has since been narrowed, distinguished, abrogated or reversed has not been checked here. Confirm it still stands before relying on it.