“A party challenging the validity of an issued patent in district court or in an inter partes review (‘IPR’) proceeding before the Patent Trial and Appeals Board (‘PTAB’) bears the burden of proving invalidity. 35 U.S.C. ยงยง 282, 316(e). To anticipate a claim of an issued patent, a prior art printed publication must disclose and enable said claim. Seymour v. Osborne, 78 U.S. (11 Wall.) 516, 538 (1870); Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1354 (Fed. Cir. 2003) (‘a non-enabled disclosure cannot be anticipatory (because it is not truly prior art)’).”
“The questions presented are:”
1. “Should printed publications be presumed to be enabling when a party challenging the validity of issued patent claims asserts that a printed publication is anticipatory prior art, such that the burden of proving that the printed publication is nonenabling lies with the patentee?”
2. “Should the holding in Rasmusson v. SmithKline Beecham Corp., 413 F.3d 1318, 1326 (Fed. Cir. 2005), that ‘proof of efficacy is not required in order for a reference to be enabled for purposes of anticipation,’ be vacated or significantly narrowed?”
