Page:Amgen Inc. v. Sanofi.pdf/22

From Wikisource
Jump to navigation Jump to search
This page has been proofread, but needs to be validated.
18
AMGEN INC. v. SANOFI

Opinion of the Court

of attack. First, it suggests that the Federal Circuit erred by applying an enablement test unmoored from the statutory text. As Amgen sees it, that court conflated the question whether an invention is enabled with the question how long may it take a person skilled in the art to make every embodiment within a broad claim. See Brief for Petitioners 24–29; see also id., at 2, 19–20, 30–36. We do not see it that way. While we agree with Amgen that enablement is not measured against the cumulative time and effort it takes to make every embodiment within a claim, we are not so sure the Federal Circuit thought otherwise. That court went out of its way to say that it “do[es] not hold that the effort required to exhaust a genus is dispositive.” 987 F. 3d, at 1088 (emphasis deleted). Instead, the court stressed, the problem it saw is the same problem we see: Amgen offers persons skilled in the art little more than advice to engage in “trial and error.” Ibid. (internal quotation marks omitted). In any event, we review judgments of the lower courts, not statements in their opinions. See Black v. Cutter Laboratories, 351 U. S. 292, 297 (1956).

Taking a similar tack, Amgen next argues that the Federal Circuit erroneously “raise[d] the bar” for enablement of claims that, like Amgen’s, encompass an entire “genus” of embodiments defined by their function. Brief for Petitioners 25 (internal quotation marks omitted). This is impermissible, Amgen argues, because the Patent Act “provides a single, universal enablement standard for all invention[s].” Ibid. (internal quotation marks omitted). Here, too, we agree with Amgen in principle: There is one statutory enablement standard. But, once more, we do not understand the Federal Circuit to have thought differently. Instead, we understand that court to have recognized only that the more a party claims for itself the more it must enable. As we have seen, that much is entirely consistent with Congress’s directive and this Court’s precedents.