“The statutory safeguard in Title 35 of the United States Code (the ‘Patent Act’) that prohibits patents on technologies like the teleportation beam from ‘Star Trek’ or the time traveling flying Delorean from ‘Back to the Future’ is the enablement requirement of Section 112. This Court instructs a near identical standard to be used to determine enablement of patent claims under Section 112 and enablement of printed prior art under Sections 102 and 103. See Amgen Inc. v. Sanofi, 598 U.S. 594, 605-06 (2023) (‘Sanofi’) (enablement of patent claims); Seymour v. Osborne, 11 Wall. 516, 555 (1870) (‘Seymour’) (enablement of prior art). The Federal Circuit holds to the contrary and erroneously chooses to treat these standards very differently. See Rasmusson v. SmithKline Beecham Corp., 413 F.3d 1318, 1325 (Fed. Cir. 2005).”
“Presently, the Federal Circuit interprets Sections 102 and 103 as presuming all printed prior art is enabling and placing the burden on the patentee to overcome that presumption. In re Antor Media Corp., 689 F.3d 1282, 1287-88 (Fed. Cir. 2012). This effective presumption of invalidity is irreconcilable with Seymour and the presumption of patent validity mandated by Sections 282 and 316(e) of the Patent Act. The Federal Circuit’s recent adoption of the USPTO’s administrative agency interpretation of Sections 102 and 103 further requires patentees to prove printed prior art can never be enabled. Together, these legal errors stack the already formidable odds against patentees saving their patents from invalidity in all forums.”
“The questions presented in this petition are:”
“1. Whether the patent challenger always has the burden of proving that the disclosures in an asserted prior art patent or printed publication are enabling of the claimed subject matter under Sections 102 and 103 of the Patent Act.”
“2. Whether the standard for proving a prior art patent or printed publication enables claimed subject matter under Sections 102 and 103 of the Patent Act is the one set forth in this Court’s holding in Seymour v. Osbourn, 11 Wall. 516, 555 (1870).”
“3. Whether this Court’s Loper Bright Enterprises v. Raimondo decision prohibits the Federal Circuit from deferring to the USPTO’s interpretation of the law of prior art enablement by silently adopting that interpretation using Fed. R. App. P. 36.”
