Supreme Court of the United States · Official docket →
Agilent Technologies, Inc. v. Synthego Corp.
Paid petition · United States Court of Appeals for the Federal Circuit, No. 2023-2186, 2023-2187 · judgment June 11, 2025
Before the decision, well below the 4.1% base rate, with no standout signals pointing toward a grant.
Questions presented
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:
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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?
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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?
Counsel of record
For petitioner
Denise Marie De Mory
Bunsow De Mory LLP
For respondent
Edward R. Reines
Jones Day
Proceedings
- Mar 30 2026Petition DENIED.
- Mar 11 2026DISTRIBUTED for Conference of 3/27/2026.
- Mar 06 2026Reply of petitioner Agilent Technologies, Inc. filed.
- Feb 20 2026Brief of Synthego Corp. in opposition not accepted for filing. (March 05, 2026) (missing corporate disclosure statement - to be refiled)
- Feb 20 2026Brief of respondent Synthego Corp. in opposition filed.
- Jan 02 2026Motion to extend the time to file a response is granted and the time is extended to and including February 20, 2026.
- Dec 31 2025Motion to extend the time to file a response from January 21, 2026 to February 20, 2026, submitted to The Clerk.
- Dec 22 2025Response Requested. (Due January 21, 2026)
- Dec 10 2025DISTRIBUTED for Conference of 1/9/2026.
- Dec 05 2025Waiver of right of respondent Synthego Corp. to respond filed.
- Nov 08 2025Petition for a writ of certiorari filed. (Response due December 15, 2025)
- Sep 02 2025Application (25A233) granted by The Chief Justice extending the time to file until November 8, 2025.
- Aug 25 2025Application (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.