No. 25-570

Agilent Technologies, Inc. v. Synthego Corp.

Lower Court: Federal Circuit
Docketed: 2025-11-13
Status: Pending
Type: Paid
Response RequestedResponse Waived
Tags: anticipation burden-of-proof enablement patent-validity printed-publications prior-art
Key Terms:
AdministrativeLaw Antitrust Patent Trademark JusticiabilityDoctri
Latest Conference: 2026-01-09
Question Presented (AI Summary)

Should printed publications be presumed to be enabling when challenging patent validity such that the burden of proving nonenabling lies with the patentee?

Question Presented (OCR Extract)

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. § § 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?

Docket Entries

2026-01-02
Motion to extend the time to file a response is granted and the time is extended to and including February 20, 2026.
2025-12-31
Motion of Synthego Corp. for an extension of time submitted.
2025-12-31
Motion to extend the time to file a response from January 21, 2026 to February 20, 2026, submitted to The Clerk.
2025-12-22
Response Requested. (Due January 21, 2026)
2025-12-10
DISTRIBUTED for Conference of 1/9/2026.
2025-12-05
Waiver of Synthego Corp. of right to respond submitted.
2025-12-05
Waiver of right of respondent Synthego Corp. to respond filed.
2025-11-08
Petition for a writ of certiorari filed. (Response due December 15, 2025)
2025-09-02
Application (25A233) granted by The Chief Justice extending the time to file until November 8, 2025.
2025-08-25
Application (25A233) to extend the time to file a petition for a writ of certiorari from September 9, 2025 to November 8, 2025, submitted to The Chief Justice.

Attorneys

Agilent Technologies, Inc.
Denise Marie De MoryBunsow De Mory LLP, Petitioner
Denise Marie De MoryBunsow De Mory LLP, Petitioner
Synthego Corp.
Edward R. ReinesJones Day, Respondent
Edward R. ReinesJones Day, Respondent