Should Abandoned Applications Be Presumed Enabling? Supreme Court Asks for Response

Details

Publish Date:
December 23, 2025
Author(s):
Source:
Patently-O
Related Person(s):
Related Organization(s):

Summary

The oral argument before the Federal Circuit, featuring Professor Mark Lemley for the patentee Agilent and Edward Reines for Synthego, illuminates the doctrinal stakes. Lemley framed two distinct but related arguments. First, that Pioneer Hybrid never actually disclosed functionality sufficient to put a person of ordinary skill in the art in possession of working guide RNAs. Second, even if some disclosure existed, the reference failed to enable because it “threw everything at the wall” without teaching which of the “quadrillion quadrillion possibilities” would actually function. Judge Prost pressed Lemley on whether these were anything more than substantial evidence arguments, asking whether the Board’s detailed factual findings should receive deference. Lemley responded that the legal question was whether a reference that says “try anything” can satisfy enablement when a person of skill would have to conduct extensive trial-and-error experimentation to identify operable embodiments.

Read More