During the oral argument of In re Antor Media Corp., 689 F.3d 1282 (Fed. Cir. 2012) back in 2012, then-Chief Judge Rader expressed a concern about creating a blanket rule that would give any printed publication a presumption of enablement. He said:
My concern with a blanket rule that says a printed publication is presumed enabled is, what if it is really a cursory outline and it may recite each element of the claims but supplies no credible recitation of how that would be done.
Oral argument of In re Antor Media Corp. reported at 689 F.3d 1282 (Fed. Cir. 2012) at 14 minute 23 second mark, recording available at https://oralarguments.cafc.uscourts.gov/default.aspx?fl=2011-1465.mp3
In In re Antor Media, the Federal Circuit was dealing with a situation where during patent reexamination a non-patent reference was presumed enabled by the Board. The applicant was entitled to rebut the presumption of enablement; but, absent such a rebuttal, the non-patent reference was presumed enabled. Part of the Federal Circuit’s reasoning was that the Patent Office does not have the resources to carry out tests or access to experts to prove that a reference is enabling, whenever such an enablement challenge is made. And, that it would be too onerous to do so. See Antor Media at 1289. Therefore, it is best to transfer the cost to the Applicant to rebut the presumption.
An article might wish to explore the recognition in Nantkwest, Inc. v. Iancu, 898 F.3d 1177, 1183 (Fed. Cir. 2018) that the USPTO actually did engage expert witnesses for purposes of that case — thus demonstrating that the USPTO does have access to expert witnesses when it chooses to do so. The article might also explore which is more onerous, (1) asking a patent applicant proceeding as a micro entity in the USPTO or in forma pauperis in federal court to spend money overcoming the presumption of enablement or (2) having the USPTO — an agency currently allotted $4.25 billion dollars for operating expenses in 2023 — provide proof of enablement (or maybe . . . . just find a better reference!).
Perhaps the more important issue is whether the presumption should apply to non-US patents, including non-patent prior art, during litigation or IPR’s. What reason is there for such a presumption in litigation or quasi-litigation between two private parties? Why should the patent owner be put to the cost of showing lack of enablement rather than the patent challenger backing up the challenge with proof of enablement? In last year’s APPLE INC. v. COREPHOTONICS, LTD., No. 2020-1438 (Fed. Cir. June 23, 2021) decision, the Federal Circuit extended the presumption of enablement for AIA proceedings, noting that a published Japanese application (the Konno reference) was presumed enabled:
It is well-established that prior art patents and printed publications like Konno, a Japanese patent publication, are presumed enabling. See, e.g., Impax Labs., Inc. v. Aventis Pharm., Inc., 545 F.3d 1312, 1316 (Fed. Cir. 2008); Amgen, 314 F.3d at 1354-55; Antor, 689 F.3d at 1288-89. We have held in the context of both district court litigation and patent prosecution that the burden of proving that a prior art reference is not enabling is on the patentee/applicant, and that it is error to shift that burden to the patent challenger/examiner. For example, in Impax, we explained that “when an accused infringer asserts that a prior art patent anticipates specific patent claims, the infringer enjoys a presumption that the anticipating disclosure also enables the claimed invention.” 545 F.3d at 1316 (citation omitted). There, we relied on our earlier decision in Amgen— where we held that it was error to shift the burden of “proving the prior art reference’s enablement of the claimed invention on the alleged infringer,” id. (citing Amgen, 314 F.3d at 1355-56)—to conclude that “the district court correctly placed the burden of proving non-enablement on the patentee,” id. Likewise, in Antor, we explained that, “during patent prosecution, an examiner is entitled to reject claims as anticipated by a prior art publication or patent without conducting an inquiry into whether or not that prior art reference is enabling.” 689 F.3d at 1289. Once the examiner has made a prima facie case of anticipation, we held that “the burden shifts to the applicant to submit rebuttal evidence of nonenablement.” Id.
The Board, citing Antor and Amgen (among others), acknowledged this in its decision, but reasoned that “none of these cases were in the context of AIA trial proceedings.” Final Decision, 2019 WL 6999883, at *9. We disagree with the Board’s reasoning. We do not see a principled distinction between our cases holding that this presumption and burden apply during patent examination and in district court litigation, and AIA trial proceedings. Thus, regardless of the forum, prior art patents and publications enjoy a presumption of enablement, and the patentee/applicant has the burden to prove nonenablement for such prior art. It was error for the Board to suggest otherwise.
APPLE INC. v. COREPHOTONICS, LTD., No. 2020-1438 (Fed. Cir. June 23, 2021).
I suppose another point that could be discussed in the article is that Congress knows how to give certain material a presumption of validity, which carries with it a presumption of enablement. Namely, claimed portions of US patents are presumed valid under 35 U.S.C. §282. With that presumption of validity comes a presumption of enablement. Given that Congress knew how to give multi-faceted presumptions (e.g., new, non-obvious, and enabled) to some types of references, should the Federal Circuit bestow presumptions on other types of references that Congress omitted?
Finally, the article might want to discuss what are the implications for prior art submission during patent prosecution. Judges of the Federal Circuit, most notably, Judge Lourie, sometimes complain during oral argument about the number of references that applicants submit during prosecution of patent applications. The current rule arguably expands the scope of “prior art” even further to cover non-enabled references that are presumed enabled. (Ironically, Judge Lourie authored the In re Antor Media opinion mentioned above.) For example, should an inventor of an enhanced submarine be required to cite Jules Verne’s “20,000 Leagues Under the Sea” because it is presumed enabled. Captain Nemo would say “No.”
