Federal Circuit Clarifies Requirements for Whether a Prior-Art Reference is Enabling in Affirming PTAB Decision on CRISPR Patents

In Agilent Technologies, Inc. v. Synthego Corp., No. 2023-2186 (Fed. Cir. June 11, 2025), the Federal Circuit upheld a PTAB decision invalidating Agilent’s patents on anticipation and obviousness grounds.

Synthego prevailed in two IPRs challenging Agilent’s patents relating to gRNA functionality in CRISPR technology. Agilent appealed, arguing that substantial evidence did not support the PTAB’s anticipation determination, the prior art was not enabling, and a person of ordinary skill would not have had a reasonable expectation of success in combining the references.

The Federal Circuit affirmed the Board’s decision on all grounds. Regarding enablement, the Court explained that for a prior art reference to be enabling, § 102 only requires that a single embodiment of a challenged claim be enabled. The Federal Circuit also clarified that while the enablement requirement of § 112 for granting a patent requires sufficient explanation as to enable a person of ordinary skill to use the invention, § 102 has no such requirement for prior art. Regarding Agilent’s remaining arguments, the Federal Circuit determined that substantial evidence supported the Board’s findings regarding anticipation and reasonable expectation of success.