Cutting the Gordian Knot of Prior-Art Enablement

by Dennis Crouch

Agilent Technologies has petitioned the Supreme Court to review the Federal Circuit's June 2025 decision affirming PTAB invalidation of two pioneering CRISPR gene-editing patents.  The case turned on a prior art abandoned patent application containing prophetic examples that were never reduced to practice.  Citing prior precedent, the Federal Circuit held that the reference was presumed to be enabling and required no additional proof of efficacy.  The petition challenges these holdings, asking:

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?

Agilent Petition. See also, Dennis Crouch, Federal Circuit Clarifies Enablement Standards: Amgen Doesn’t Control Anticipatory Prior Art, Patently-O (June 11, 2025).

The petition arrives at this important moment as AI systems threaten to flood the patent system with billions of speculative disclosures. As most of us have experienced, the difficulty with GenAI outputs is that the technical hypotheses often seem reasonable on the surface and are presented with confident, authoritative language, but they typically suffer from the major defect of having little grounding in reality. With billions of new AI-generated documents published over the past few years, separating the wheat from the chaff ex ante becomes practically impossible.  But after-the-fact, patent challengers will be able to identify the winners in hindsight. The result is a prior art landscape increasingly populated with plausible-sounding but potentially non-operative disclosures that the current legal framework treats as equivalent to genuine inventions.