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Explore the latest in patent, trademark, and copyright cases on the Merchant & Gould LLP blog. Stay informed with expert insights on intellectual property law updates.

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Last week, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in <a href="https://www.cafc.uscourts.gov/opinions-orders/23-2186.OPINION.6-11-2025_2528805.pdf">Agilent Technologies, Inc. v. Synthego Corp., No. 23-2186 (June 11, 2025)</a>, affirming two decisions of the Patent Trial and Appeal Board finding every claim of two Agilent patents directed to the gene-editing tool CRISPR invalid.

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CRISPR uses a specialized protein guided by RNA to modify sAgilent Technologies, Inc. v. Synthego Corp., No. 23-2186 (June 11, 2025)pecific DNA sequences, allowing genetic alterations. The Agilent patents claim a synthetic guide RNA (g-RNA) that allows cleaving DNA at target sites. Facing infringement allegations, Synthego petitioned for inter partes review of the patents. The Board instituted review and issued a final written decision finding every claim unpatentable as either anticipated by an international application filed by Pioneer Hi-Bred or obvious in view of Pioneer in combination with two scientific publications. Agilent appealed, arguing no substantial evidence supported the Board’s finding that Pioneer discloses g-RNA functionality; even if there were evidence, Pioneer is not enabling under the test established in Amgen v. Sanofi; and no substantial evidence supported the Board’s obviousness finding.

The Federal Circuit rejected all three arguments and affirmed the Board’s decision. On the first argument, the Court held the Board’s anticipation decision was factually supported. Next, on enablement, the Court distinguished Amgen, noting Amgen was concerned with whether asserted claims were sufficiently enabled, “not whether a prior-art reference was enabling and could thus support anticipation.” &nbsp;The Court further explained that in Amgen the patent required “painstaking experimentation to see what works,” whereas here substantial evidence showed that a POSA could understand all the components of a CRISPR system, g-RNA functionality, and any modifications from the Pioneer application. The Board’s determination on enablement was, thus, not erroneous.

Finally, on obviousness, the Court found neither of Agilent’s arguments persuasive. Crediting the Board’s “comprehensive analysis” explaining a POSA’s motivation to combine Pioneer with the academic studies, it held Pioneer need not have disclosed modifications to the claimed g-RNA functionality to support the obviousness combination. The Court also credited the Board’s “thorough analysis” explaining why a POSA would “reasonably expect success” when combining Pioneer with the studies, including its citation to Agilent’s expert’s testimony about multiple research groups that had independently proposed the same types of g-RNA modifications claimed in the challenged patents and used them in a CRISPR system.

CAFC Affirms PTAB Invalidation of CRISPR Patent

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