IP UPDATE
Exploring the latest in intellectual property law
IP UPDATE
Exploring the latest in intellectual property law
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Applicant-admitted prior art may inform but can’t be basis for IPR challenges

by | Jul 24, 2025 |

The US Court of Appeals for the Federal Circuit clarified that while applicant-admitted prior art (AAPA) may be cited as evidence of general background knowledge in inter partes review (IPR) proceedings, it cannot serve as the basis for an IPR ground. The Court also confirmed that the petitioner had Article III standing to cross-appeal based on concrete plans for future activity. Shockwave Medical, Inc. v. Cardiovascular Systems, Inc., Case No. 23-1864 (Fed. Cir. July 14, 2025) (Lourie, Dyk, Cunningham, JJ.)

Shockwave Medical owns a patent directed to treating atherosclerosis using a balloon catheter in combination with shockwaves generated by electrodes and a pulse generator. The patent specification acknowledged that “over-the-wire angioplasty balloon catheters” were well known in the art. Cardiovascular Systems, Inc. (CSI) filed an IPR petition asserting that it would have been obvious to modify a European patent application with the angioplasty balloon catheter disclosed in the AAPA.

The Patent Trial & Appeal Board found all but one claim unpatentable as obvious, relying on the AAPA solely as evidence of background knowledge. Both parties appealed.

Shockwave challenged the Board’s reliance on the AAPA, arguing that 35 U.S.C. § 311(b) prohibits using AAPA as a basis for an IPR petition. The Federal Circuit disagreed, reaffirming its prior decisions in Qualcomm I and Qualcomm II. In Qualcomm I, the Court explained that AAPA cannot be the basis of a ground in an IPR petition but can be evidence of background knowledge. In Qualcomm II, the Court found that the Board erred in determining that the use of AAPA was proper when the petitioner expressly included AAPA in one of its grounds. Relying on these decisions, the Court explained that while AAPA cannot form the basis of a ground in an IPR petition, it may be used to demonstrate the general knowledge of a person of ordinary skill in the art and to supply missing claim limitations.

Shockwave pointed to a table in the Board’s final written decision listing AAPA under “reference(s)/basis” as evidence that the Board improperly relied on AAPA as a ground. The Federal Circuit rejected this argument, distinguishing Qualcomm II and emphasizing that the petitioner, not the Board, defines the grounds for review. Because CSI did not rely on AAPA as a ground, its use was permissible.

CSI cross-appealed the Board’s finding that one claim was not obvious. Shockwave challenged CSI’s standing, but the Federal Circuit found that CSI had Article III standing because it had concrete plans to begin clinical trials and because of Shockwave’s public statements suggesting it would assert the patent. The Court concluded that these facts created a substantial risk of future infringement.

On the merits, the Federal Circuit agreed with CSI that the Board erred by failing to consider the prior art as a whole. The Court reiterated that the obviousness inquiry requires evaluating the combined teachings of the prior art, not individual references in isolation. Finding no evidence to support the Board’s conclusion, the Court reversed the Board’s decision as to the remaining [...]

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Don’t walk away: Trademark owner can’t bring infringement suit against co-owner

by | Jul 17, 2025 |

The US Court of Appeals for the Fifth Circuit upheld a district court’s summary judgment decision that a co-owner of a trademark cannot bring infringement or dilution claims under the Lanham Act against other co-owners or their licensees. Reed v. Marshall et al., Case No. 24-20198 (5th Cir. July 2, 2025) (Graves, Smith, Duncan, JJ.)

Originally formed by Di Reed, Joi Marshall, and Tonya Harris (aka Tonya Kelly), Jade was a music group that enjoyed commercial success before disbanding in 1995. In 2018, the trio attempted a reunion and jointly applied for the federal service mark JADE, which was registered in June 2019. The reunion ultimately did not materialize. In 2021, Marshall and Harris began performing under the JADE name with a new singer, Myracle Holloway, engaged under a six-month work-for-hire agreement. Reed objected, claiming they used the jointly owned mark without her consent, and filed suit in the US District Court for the Southern District of Texas, asserting claims under the Lanham Act and Texas law. The district court granted summary judgment in favor of Marshall and Harris. Reed appealed.

The Fifth Circuit affirmed. The central question was whether a co-owner of a federally registered trademark may bring an action under the Lanham Act against another co-owner for alleged unauthorized use of the mark.

The district court concluded that absent a contractual agreement to the contrary, co-owners of a trademark each have equal rights to use the mark. The Fifth Circuit affirmed that the Lanham Act does not authorize one co-owner to sue another for infringement or dilution; such disputes must be resolved through contract law or other private arrangements. Because Holloway’s use of the mark was authorized by two co-owners of the registration, she too was shielded from liability under the Lanham Act.

The Fifth Circuit also rejected Reed’s unfair competition and dilution claims, finding no evidence of misuse that would infringe the rights of an equal co-owner.

Practice note: When multiple parties intend to co-own a trademark, it is usually advisable to enter into an agreement that clearly defines each party’s rights and limitations on use. Without such an agreement, co-owners may find themselves with limited recourse in the event of a dispute.



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Que sera, sera: No declaratory relief after songwriter’s heir terminated copyright assignments

by | Jul 17, 2025 |

Addressing the intersection of a trust beneficiary’s rights to royalties and an heir’s copyright termination rights under 17 U.S.C. § 203, the US Court of Appeals for the Sixth Circuit affirmed the district court’s order dismissing the beneficiary’s request for declaratory relief for failure to state a claim. Tammy Livingston v. Jay Livingston Music, Inc. and Travilyn Livingston, Case No. 24-5263 (6th Cir. Jul. 7, 2025) (Readler, Siler, Clay, JJ.)

Jay Livingston was a prominent 20th century songwriter. In 1985, he established a family trust that granted the beneficiaries royalties from nearly 250 songs and transferred his reversionary copyright interests in the songs to the trust. The copyright interest was reversionary because in 1984, Livingston executed a contract that began assigning copyright interests in the songs to a company whose legal successor would become Jay Livingston Music. That contract laid the groundwork for successive agreements that would each transfer a specific song to the company. By 2000, Livingston had assigned his interests in each song to Jay Livingston Music.

In 2000, Livingston signed a second overarching contract, extending the company’s rights to the full duration of each song’s copyright protection. The songs’ copyrights expire around 2050. In 2003, after Livingston passed away, a California probate court ordered that the trust no longer held any rights in his copyright interests beyond the royalties.

In 2015, Travilyn Livingston (Livingston’s only child) terminated the assignment to Jay Livingston Music of 32 songs under § 203(a)(2)(B) of the Copyright Law, reverting all rights to Travilyn. Tammy Livingston, Travilyn’s daughter, sued Travilyn in 2022, requesting declaratory relief stating either that the termination notices Travilyn used were invalid or that Tammy remained entitled to royalties from the 32 songs under state law. The district court dismissed the case for failure to state a claim. Tammy appealed.

The Sixth Circuit affirmed the district court. The Sixth Circuit considered whether Livingston executed the 2000 contract as an individual or a trustee and to what extent that affected the validity of the assignment extensions. The Court determined that the probate court’s 2003 order had preclusive effect and that Livingston had signed the 2000 contract in his individual capacity. Therefore, the company – not the trust – held the valid assignments in 2015 when Tammy terminated them.

Tammy argued that Travilyn could only terminate the assignments if they had been transferred to a third party in 1984. Tammy claimed that Travilyn did not own the company when the 1984 contract was executed and that Livingston thus granted the rights to himself as the owner of the company. The Sixth Circuit was unpersuaded by this argument because the 1984 agreement stated that Travilyn owned the company on the date of execution. Tammy next argued that the district court committed reversable error when it stated that Travilyn owned the company “sometime before” the 1984 contract’s execution rather than on the day, as the contract itself stated. The Court found that this misstatement did not rise to reversible error.

Finally, to support her [...]

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Appeal is too late to raise percolating claim construction dispute

by | Jul 17, 2025 |

The US Court of Appeals for the Federal Circuit affirmed a district court’s finding of noninfringement, concluding that the patent owner had improperly raised a claim construction issue for the first time on appeal – an argument not preserved at the district court level. Egenera, Inc. v. Cisco Systems, Inc., Case No. 23-1428 (Fed. Cir. July 7, 2025) (Prost, Taranto, Stark, JJ.)

Egenera owns a patent that enhances traditional server systems by enabling a one-time physical setup followed by flexible virtual reconfiguration. The company alleged that Cisco infringed specific claims of the patent.

During claim construction, the parties disputed the interpretation of two terms: “computer processor/processor” and “emulate Ethernet functionality over the internal communication network.” The district court adopted the ordinary meaning of “computer processor,” which excluded Cisco’s unified computing system from its scope. Regarding the term “emulate,” the district court considered whether it implied an absence from the internal communication network but made no further determinations as the parties did not explicitly raise a dispute regarding the remainder of the claim term. Based on its construction of “computer processor/processor,” the district court granted Cisco’s motion for summary judgment on certain claims. Later, at trial, a jury found no infringement of other asserted claims. Egenera moved for judgment as a matter of law (JMOL) or alternatively for a new trial, both of which the district court denied. Egenera appealed the post-trial rulings and the earlier summary judgment ruling.

The Federal Circuit affirmed the district court’s grant of summary judgment. It concluded that the record lacked sufficient evidence to show that Cisco’s system “emulated” Ethernet functionality as required by the asserted claims. The Court emphasized that Egenera’s argument focused narrowly on the construction of the term “emulate,” rather than on the evidentiary record. Moreover, neither party clearly indicated that the dispute centered on unresolved claim construction rather than factual issues. The Court noted that it will not address claim construction on appeal where the issue was not preserved in the district court and was inadequately presented on appeal. As a result, the Court confined its analysis to the sufficiency of the evidence and upheld the district court’s finding of noninfringement.

The Federal Circuit also affirmed the district court’s denial of JMOL. The Court emphasized that it needed to address only one of Cisco’s proposed noninfringement grounds to determine whether substantial evidence supported the jury’s verdict. It concluded that the jury had a sufficient evidentiary basis to find that Egenera failed to prove infringement.

Finally, the Federal Circuit upheld the district court’s denial of Egenera’s motion for a new trial. It rejected all of Egenera’s arguments, which alleged errors related to jury selection, jury instructions, expert testimony, closing arguments, and a verdict contrary to the weight of the evidence.



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State court action doesn’t create reasonable apprehension of related federal claims

by | Jul 17, 2025 |

Addressing whether a federal district court had jurisdiction over an action for declaratory relief that certain trade secrets and trademarks were invalid and not infringed, the US Court of Appeals for the Eighth Circuit concluded that state law claims for breach of contract, trade secret misappropriation, and trademark infringement did not create a reasonable apprehension of federal litigation sufficient to give rise to federal jurisdiction. Thunderhead of Ankeny, Inc. v. Chicken Bones of Kearney, Inc., Case No. 24-2741 (8th Cir. July 8, 2025) (Colloton, Arnold, Gruender, JJ.)

Nearly 20 years ago, David Anders sold his equity in Chicken Bones of Kearney, Inc., which ran a bar and grill called the Chicken Coop. Anders subsequently opened a new Chicken Coop restaurant. Chicken Bones sued Anders for misappropriating Chicken Bones’ trade secrets, trademarks, and trade dress. The parties settled, and Anders received a limited license to the Chicken Coop intellectual property. Anders then opened several other Chicken Coop locations under that license.

Believing that Anders had not complied with the license in opening the new restaurants, Chicken Bones sued Anders in state court for breach of the settlement agreement, misappropriation of trade secret recipes, and infringement of the Chicken Coop trademarks and trade dress. In response, Anders sued Chicken Bones in federal court, seeking declarations of noninfringement and invalidity. The district court dismissed the suit for lack of jurisdiction. Anders appealed.

The parties and the Eighth Circuit assumed that the district court would have jurisdiction only if the suit presented a federal question. The Eighth Circuit explained that to assess federal question jurisdiction in the case of a declaratory action, the Court must imagine a traditional action that presents the same controversy and determine whether a federal claim would appear on the face of the resulting complaint. “If, but for the availability of the declaratory judgment procedure, the federal claim would arise only as a defense to a state created action, jurisdiction is lacking.”

Applying this principle, the Eighth Circuit concluded that the district court did not have jurisdiction over Anders’ declaratory action because he primarily sought vindication of his defenses to Chicken Bones’ pending state law claims. While the Court recognized that Anders also sought declaratory relief in anticipation of potential federal trade secret, trademark, and trade dress claims, the Court reasoned that any federal law controversy between the parties was too speculative to support jurisdiction. While a threat of litigation can give rise to a justiciable controversy, there was no evidence that Chicken Bones would assert overlapping and duplicative federal law claims against Anders. The Eighth Circuit further found that Chicken Bones’ petition to cancel Anders’ federal trademark registration of a Chicken Coop logo did not change its analysis, because the petition merely confirmed the existence of a trademark infringement dispute between the parties, which Chicken Coop elected to adjudicate in state court.

The Eighth Circuit distinguished cases involving state law trade secret claims concerning a patented invention. Because there is no state patent system, such trade secret claims can [...]

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Motivation, expectation of success negate obviousness presumption in overlapping range case

by | Jul 17, 2025 |

The US Court of Appeals for the Federal Circuit affirmed (on its second review) a district court’s ruling upholding the validity of patent claims related to a long-acting injectable dosing regimen, finding that the presumption of obviousness does not apply automatically and must be grounded in specific factual findings, particularly regarding a skilled artisan’s motivation and expectations. Janssen Pharmaceuticals, Inc. v. Teva Pharmaceuticals USA, Inc., Case No. 25-1228 (Fed. Cir. July 8, 2025) (Prost, Reyna, Taranto, JJ.)

Janssen sued Teva under the Hatch-Waxman Act in 2018 after Teva filed an abbreviated new drug application (ANDA) seeking approval for a generic version of Janssen’s drug. Teva stipulated infringement but challenged the patent’s validity, arguing that all claims were obvious in light of prior art. The patent at issue covered a dosing regimen involving two “loading doses” spaced about a week apart, followed by monthly maintenance injections, designed to improve patient compliance compared to traditional oral dosing.

In 2021, the district court rejected Teva’s obviousness arguments, citing key differences between the claims and prior art, including the specific dosage amounts, the sequence of administration, and the requirement for deltoid injections. In 2024, the Federal Circuit initially vacated that decision and remanded for further analysis. On remand, the district court again found the claims nonobvious, and Teva appealed again.

A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. Teva argued that a presumption of obviousness should apply because the prior art disclosed equal loading doses (150 or 100 mg-eq) within the claimed range. The Federal Circuit disagreed, emphasizing that the presumption depends on factual premises (such as a skilled artisan’s motivation to optimize and expectations from routine experimentation), which were not met here. The Court noted that Janssen’s specific choice of a higher first dose followed by a lower second dose did not clearly fall within the presumption’s scope.

Turning to the obviousness analysis, the Federal Circuit found that the three primary prior art references did not disclose a loading-dose regimen. Teva’s additional references, which it claimed taught dose reduction strategies, were also deemed insufficient. The Court found that one expert cited a reference recommending a high first dose for acutely ill patients while another noted that long-acting injectables were not typically used for such patients. The Court found that the prior art taken as a whole undermined Teva’s position.

Teva further contended that the district court improperly considered safety and efficacy (factors not recited in the claims) and erred in finding that the multidose regimen added complexity that would discourage a skilled artisan. The Federal Circuit rejected these arguments, affirming that the district court appropriately considered the motivation to develop a safe and effective regimen and correctly found that the prior art lacked relevant safety or efficacy data for multidose approaches.



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Prosecution history primacy: “Consisting essentially of” means what applicant said it meant

by | Jul 10, 2025 | ,

In a decision that underscores the primacy of prosecution history to determine claim scope, the US Court of Appeals for the Federal Circuit reversed the Patent Trial & Appeal Board’s interpretation of the transitional phrase “consisting essentially of,” holding that the patentee’s actions during prosecution narrowed the claims beyond the conventional construction. Eye Therapies, LLC v. Slayback Pharma, LLC, Case No. 23-2173 (Fed. Cir. June 30, 2025) (Scarsi, Dist. J., by designation; Taranto, Stoll, JJ.)

The case involved a method for reducing eye redness using low concentrations of brimonidine, a vasoconstrictive compound. Eye Therapies owns a patent that claims methods of administering brimonidine “consisting essentially of” the active ingredient. During inter partes review (IPR), the Board applied the typical construction of that transitional phrase, allowing for the presence of other active agents as long as they did not materially affect the invention’s basic and novel properties. Based on that reading, the Board found the claims obvious over prior art references that disclosed brimonidine in combination with other drugs. On appeal, Eye Therapies argued that the Board’s construction was too broad and inconsistent with the prosecution history.

The Federal Circuit agreed. Although “consisting essentially of” is generally understood to permit unlisted ingredients that don’t materially affect the invention, the Court emphasized that this meaning can be overridden by the intrinsic record. In this case, the applicant amended the claims to avoid prior art and repeatedly argued that the invention involved only brimonidine, with no other active agents. During the original prosecution, the examiner allowed the claims on that basis. The Court found these statements to be definitional, particularly in light of the applicant’s use of “i.e.” to equate the claim language with a brimonidine-only method. Given the clarity and consistency of the applicant’s position, the Court concluded that the prosecution history required a narrower reading than the one the Board used based on the phrase’s conventional meaning.

The Federal Circuit acknowledged that the patent specification disclosed embodiments containing additional active agents. That alone, however, did not justify a broader construction. The narrowing amendment came after the specification was drafted, and the Court reiterated that not every embodiment must fall within the scope of the claims, particularly when the claims have been narrowed during prosecution. The Court also noted that other embodiments in the specification were fully consistent with the narrower interpretation. Taken together, these factors reinforced the conclusion that the applicant’s prosecution statements – not the broader illustrative disclosures – defined the proper scope of the claims.

The Federal Circuit distinguished its 2009 decision in Ecolab v. FMC, where it declined to apply prosecution history disclaimer despite similar language. In Ecolab, the patentee initially stated that peracetic acid was the “sole antimicrobial agent,” but the examiner clarified that “consisting essentially of” did not mean “solely.” The applicant never repeated the statement and secured allowance on other grounds. The specification in Ecolab also described compositions that included other known antimicrobial agents, which supported the broader interpretation. In contrast, the applicant here amended the claims, consistently [...]

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When it comes to objective criteria of nonobviousness, nexus is looser for license evidence

by | Jun 26, 2025 |

The US Court of Appeals for the Federal Circuit partially reversed a decision by the Patent Trial & Appeal Board, effectively relaxing the nexus requirements for patent licenses pertaining to their usage as objective indicia of nonobviousness. Ancora Technologies, Inc. v. Roku, Inc. et. al., Case Nos. 23-1674; -1701 (Fed. Cir. June 16, 2025) (Lourie, Reyna, Hughes, JJ.) (per curium).

Ancora owns a patent directed to limiting software use on a computer through license verification. The patented technology centers on storing an “agent,” which is a license verification program, in a computer’s basic input/output system (BIOS) rather than in volatile memory. In 2021, Nintendo, Roku, and VIZIO separately filed petitions for inter partes review (IPR) challenging claims of Ancora’s patent. The Board consolidated the proceedings and ultimately found certain claims of the patent unpatentable as obvious over a combination of two prior art references: Hellman (which discloses storing license information in nonvolatile memory) and Chou (which discloses a BIOS-level security routine). Ancora appealed.

Ancora raised three issues on appeal:

  • That the Board erred in construing the claim term “agent”
  • That even if the Board correctly construed “agent,” it nonetheless erred in determining obviousness under 35 U.S.C. § 103 based on a combination of Hellman and Chou
  • That the Board erred in its analysis of secondary considerations of nonobviousness.

The Federal Circuit affirmed the Board’s construction of “agent” to mean “a software program or routine” with no further limitations. The Court disagreed with Ancora’s argument that “agent” was limited to use in software only, primarily because neither the patent nor prosecution history provided any disclaimer of hardware. For similar reasons, the Court also disagreed with Ancora’s argument that “agent” was limited to use at the operating-system level.

On the obviousness determination, the Federal Circuit upheld the Board’s conclusion that the combination of Hellman and Chou rendered the claims prima facie obvious. The Court rejected Ancora’s argument that the Hellman/Chou combination would not provide motivation to combine since they are redundant.

The Federal Circuit disagreed with the Board’s analysis of the objective indicia of nonobviousness, particularly the treatment of Ancora’s licensing evidence. The Board found that Ancora failed to establish a sufficient nexus between the claimed invention and evidence of two objective indicia of nonobviousness: industry praise and licensing.

The Federal Circuit agreed with the Board on industry lack of nexus for the alleged praise (where the Board found that praise for the invention in a press release and an agreement between Ancora and another company offering products using the patent was directed broadly to the patent and not specifically to the challenged claims). However, the Court found that the Board erred regarding the appropriate nexus as it relates to Ancora’s licensing evidence.

The Board found that Ancora failed to show a nexus between the challenged claims and two licenses it obtained through settlement agreements in other cases. The Federal Circuit disagreed, finding that the Board applied an overly stringent nexus standard inconsistent with precedent. While products may require detailed [...]

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Case closed: Commission sanctions ruling isn’t an import decision

by | Jun 26, 2025 |

The US Court of Appeals for the Federal Circuit dismissed an appeal for lack of jurisdiction, finding that a denial of sanctions at the International Trade Commission was not a “final determination” under trade law because it did not affect the exclusion of imported goods. Realtek Semiconductor Corp. v. ITC and Future Link Systems, LLC, Case No. 23-1187 (Fed. Cir. June 18, 2025) (Reyna, Bryson, Stoll, JJ.)

In 2019, Future Link entered into a license agreement with MediaTek, Inc. (not a party to the present litigation), which included a provision for a lump-sum payment if Future Link filed a lawsuit against Realtek. Future Link subsequently initiated a patent infringement complaint against Realtek before the Commission. During the proceedings, Future Link settled with a third party and determined that the settlement resolved the underlying dispute, prompting it to notify Realtek and ultimately withdraw its complaint. Realtek moved for sanctions, citing the MediaTek agreement as improper, but the administrative law judge (ALJ), while expressing concern about the agreement’s lawfulness, found no evidence it influenced the complaint and denied sanctions. The Commission terminated the investigation after no petition for review of the ALJ’s termination order was filed. Realtek then petitioned the Commission to review the denial of sanctions, but the Commission declined, closing the sanctions proceeding. Realtek appealed to the Federal Circuit, not challenging the investigation’s termination but seeking an order requiring Future Link to pay a fine based on the alleged impropriety of its agreement with MediaTek.

Realtek argued that the Commission and the ALJ violated the Administrative Procedure Act (APA). In response, the Commission and Future Link not only defended the denial on the merits but also challenged the Federal Circuit’s jurisdiction and Realtek’s standing to appeal. The Court agreed that it lacked jurisdiction under 28 U.S.C. § 1295(a)(6), which only authorizes review of final determinations under specific subsections of Section 337 of the Tariff Act of 1930 (19 U.S.C. § 1337). Because the Commission’s denial of sanctions under subsection (h) does not constitute a “final determination” under § 1337(c), the Court declined to address standing or the merits of the sanctions issue.

The Federal Circuit emphasized that a “final determination” within the meaning of § 1295(a)(6) refers to decisions affecting the exclusion of imported articles, such as those made under subsections (d), (e), (f), or (g) of § 1337. Realtek argued that the Commission’s denial of its sanctions request qualified as a final merits decision, but the Court disagreed, citing long-standing precedent, including its 1986 decision in Viscofan, S.A. v. ITC, that limits appellate jurisdiction to exclusion-related rulings. Because the sanctions decision had no bearing on whether products were excluded from importation, the Court held that it lacked the authority to review and dismissed the appeal.



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CRISPR Clarity: Enablement Is Analyzed Differently Under §§ 102 and 112

by | Jun 18, 2025 | ,

In a decision underscoring the distinct standards governing enablement under §§ 102 and 112, the US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s finding that a prior art reference was enabling for purposes of anticipation, even in the absence of working examples. Agilent Technologies, Inc. v. Synthego Corp., Case Nos. 23-2186; -2187 (Fed. Cir. June 11, 2025) (Prost, Linn, Reyna, JJ.)

The case centers on CRISPR, the gene-editing technology that has reshaped the frontiers of biology and biotechnology. Agilent owns patents that claim chemically modified guide RNAs (gRNAs) designed to improve stability and performance in CRISPR-Cas systems. Synthego filed an inter partes review (IPR) petition asserting that the patents were unpatentable. The Board found all claims unpatentable, relying on a 2014 publication by Pioneer Hi-Bred that disclosed similar modified gRNAs. Agilent appealed.

Agilent challenged the Board’s finding that the prior art was enabling, arguing that Pioneer Hi-Bred merely proposed a research plan without demonstrating which specific modifications would yield functional gRNAs. Agilent emphasized that the reference lacked working examples and disclosed numerous nonfunctional sequences, contending that a skilled artisan would not have been able to identify a successful embodiment without undue experimentation. It also argued that the nascent state of CRISPR technology in 2014 compounded the unpredictability, making the reference non-enabling. In support, Agilent relied heavily on the Supreme Court’s 2023 decision in Amgen v. Sanofi, where the Supreme Court invalidated a broad genus claim for failing to enable its full scope.

The Federal Circuit was not persuaded. The Court drew a clear distinction between enablement under § 112 (which governs patent validity) and enablement under § 102 (which governs anticipation). The Court explained that the bar is lower for the latter, and that a prior art reference need only enable a single embodiment within the scope of the claim. While Amgen involved § 112, the Court emphasized that this case turned on § 102, where the standard is less demanding.

The Federal Circuit grounded this distinction in both the statutory text and the underlying purpose of the respective provisions. Statutorily, § 112 requires that a patent specification enable a person of ordinary skill in the art to “make and use” the invention. Section 102, by contrast, contains no such requirement. This divergence reflects a difference in purpose: § 112 ensures that the patentee does not claim more than they have taught, thereby preventing overbroad monopolies. As the Supreme Court explained in Amgen, “[t]he more a party claims, the broader the monopoly it demands, the more it must enable.” But the Federal Circuit emphasized that the Supreme Court’s reasoning in Amgen was rooted in the patentee’s burden to support the full scope of a genus claim under § 112. That concern, the Court explained, does not apply in the § 102 context, where the question is not how much the prior art claims, but whether it teaches enough for a skilled artisan to practice at least one embodiment without undue [...]

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