Our weekly SoCal IP Institute meeting on Monday, May 10, 2021 will be a discussion of two Federal Circuit cases:
Functional Claim “Raises the Bar for Enablement”
In Amgen v. Sanofi and Regeneron (Fed. Cir. 2021) (available – Amgen case) the CAFC provided another anti-functional-limitation decision — this time rendering Amgen’s monoclonal antibody claims invalid. Although enablement decisions traditionally differed greatly between biotech and computer innovations, the decision here relies heavily on the Federal Circuit’s recent software decision in McRO, Inc. v. Bandai Namco Games Am. Inc., 959 F.3d 1091 (Fed. Cir. 2020).
The first jury sided with Amgen, the patentee, finding that Regeneron had failed to prove that the asserted patents lacked enablement or written description. On appeal, the Federal Circuit vacated the resulting final judgment and ordered a new trial based upon errors in evidentiary rulings and jury instructions. On remand, the second jury again sided with Amgen. The district court though favored the defendant and awarded Judgment as a Matter of Law (JMOL) for lack of enablement. On appeal, the Federal Circuit has affirmed.
Enabled / Non-enabled Reference and Obviousness
The legal concept of obviousness is complex and continues to be deliberated and debated. A recent case law of Raytheon Technologies Corporation (Raytheon) vs. General Electric Company (GE) (available Raytheon case) in US Court of Appeals for the Federal Circuit, elucidated some issues related to the obviousness of an invention.
A prior art must enable a person to make and use the claimed invention based either on self-enablement or on a non-enabling reference. In other words, if a prior art has enablement to arrive at an invention, there is enough evidence for obviousness. In case a prior art is non-enabling, it could still be considered for obviousness along with other prior art(s) to arrive at obviousness. A person skilled in the art, if motivated by the non-enabled reference, could work out if it leads to an invention.
It could not be demonstrated how a person skilled in the art would use the disclosure of Knip to build the turbo-fan engine claimed in the ’751 patent. Thus, the decision of the Board was reversed.
We will discuss these cases at our weekly SoCal IP Institute with any who wish to join us on a video conference on May 10, 2021 at 1:00 pm. Simply email elisham @ socalip.com (remove the spaces which were added to to avoid spammers) to RSVP. This activity is approved for 1 hour of California MCLE credit.