This morning the Federal Circuit issued a nonprecedential opinion in a patent case appealed from the Patent Trial and Appeal Board; a nonprecedential order denying a petition for patent and en banc rehearing in a patent infringement case, along with a nonprecedential opinion by Judges Lourie, Prost, and Hughes concerning the denial of panel rehearing and the argument their panel decision changed the law of enablement; and three Rule 36 summary affirmances. Here are the introductions to the opinions and a list of the summary afirmances.
Intex Recreation Corp. v. Team Worldwide Corp. (Nonprecedential)
Intex Recreation Corp. appeals the Patent Trial and Appeal Board’s decision that none of the challenged claims of U.S. Patent No. 9,211,018 are unpatentable for obviousness. Intex challenges the Board’s construction of “inflatable body” as requiring substantial airtightness, as well as the Board’s conclusion of non-obviousness. For the reasons explained below, we affirm the Board’s construction of the term “inflatable body” and vacate the Board’s conclusion of non-obviousness.
Amgen Inc. v. Sanofi, Aventisub LLC (Nonprecedential Order)
Amgen Inc., Amgen Manufacturing, Limited, and Amgen USA, Inc. filed a petition for rehearing en banc. A response to the petition was invited by the court and filed by Sanofi, Aventisub LLC, Sanofi-Aventis U.S. LLC, and Regeneron Pharmaceuticals Inc. A group of intellectual property professors; GlaxoSmithKline plc; and Biogen Inc., Bristol-Myers Squibb Company, Corning Incorporated, and Merck Sharp & Dohme Corp. requested leave to file briefs as amici curiae, which the court granted. The petition was first referred as a petition for rehearing to the panel that heard the appeal, and thereafter the petition for rehearing en banc was referred to the circuit judges who are in regular active service.
Upon consideration thereof,
IT IS ORDERED THAT:
The petition for panel rehearing is denied.
The petition for rehearing en banc is denied.
The mandate of the court will issue on June 28, 2021.
LOURIE, Circuit Judge, with whom PROST and HUGHES, Circuit Judges, join, authoring a separate opinion on the denial of the petition for panel rehearing.
Amgen has petitioned for panel rehearing. The petition is denied.
Amgen argues that we have created a new test for enablement. That is incorrect. It has always been, or at least has been since the Patent Act of 1870, that a patent applicant must enable one’s invention, whatever the invention is. See Section 26, Patent Act of 1870, 16 Stat. 198 (1870), (R.S. § 4888). A composition of matter, whether a chemical compound or biological material, accordingly, must be enabled, as must other types of inventions.