Page:Amgen Inc. v. Sanofi.pdf/16

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AMGEN INC. v. SANOFI

Opinion of the Court

textile material.” Ibid. Even that broad claim “might” have been permissible, the Court allowed, if Sawyer and Man had disclosed “a quality common” to fibrous and textile substances that made them “peculiarly” adapted to incandescent lighting. Ibid. Had they done so, others would have known how to select among such materials to make an operable lamp. But the record showed that most fibrous and textile materials failed to work. Only through “painstaking experimentation” did Edison discover that bamboo “answered the required purpose.” Id., at 475–476. The Court summed up things this way: “[T]he fact that paper happens to belong to the fibrous kingdom did not invest [Sawyer and Man] with sovereignty over this entire kingdom.” Id., at 476.

The Court returned to these principles in Holland Furniture. There, the evidence indicated that animal glue has properties that have long made it excellent for wood veneering. See 277 U. S., at 247. Seeking a substitute, Perkins Glue Company had developed and patented a starch glue similar enough to animal glue that craftsmen could also use it for wood veneering. See ibid. Yet Perkins’s patent included a claim that went beyond the specific starch glue it manufactured. See id., at 250–251. This claim covered all “starch glue which, [when] combined with about three parts or less by weight of water, will have substantially the same properties as animal glue.” Id., at 251. Perkins’s specification instructed gluemakers to choose a “starch ingredient” with “such qualities” that it would yield a product “ ‘as good as animal glue’ ” for wood veneering “when combined with three parts of water and with alkali.” Id., at 256.

The Court held this broad claim invalid for lack of enablement. Id., at 258. The specification described the key input—the “starch ingredient”—in terms of its “use or function” rather than its “physical characteristics or chemical properties.” Id., 256. And that left gluemakers in a bind. As the Court put it: “One attempting to use or avoid the