NEWS
How One Supreme Court Decision Sparked an Era of “Efficient Infringement” — and What Might Be Changing
Nearly two decades ago, the Supreme Court’s decision in eBay v. MercExchange quietly reshaped the patent landscape — and not necessarily for the better. The ruling rejected the idea that winning a patent infringement case should automatically lead to an injunction against the infringer. Instead, it required courts to apply a traditional four-factor test to decide if an injunction is appropriate. On the surface, that sounds fair. In practice, though, it has opened the door to a troubling trend: “efficient infringement.”
What Is Efficient Infringement?
Under the eBay framework, infringers can often avoid an injunction, and simply pay damages instead. For patent holders, especially those who don’t manufacture products but license their inventions, removal of the threat of injunction is a loss of bargaining power. In the case of NPEs (Non-Practicing Entities) such as university patent holders, the loss is even worse because their lack of sales means that any assessed money damages might be very slim.
Congress Has Tried to Fix This — With Little Success
Lawmakers proposed the RESTORE Patent Rights Act in both 2024 and 2025 (as H.R. 1574 and S. 708), aiming to make it easier for patent holders to obtain injunctions. But progress has been slow, largely due to the influence of those benefiting from the status quo.
A Potential Shift: Radian v. Samsung
Enter a recent case: Radian Memory Systems v. Samsung. Radian, an NPE, is suing Samsung for patent infringement related to flash memory tech. Samsung argues Radian shouldn’t get an injunction because it doesn’t make or sell products—just licenses them. But here’s where things get interesting: The Department of Justice (DOJ) and the U.S. Patent and Trademark Office (USPTO) jointly filed a Statement of Interest in support of Radian’s request for a preliminary injunction.
What the DOJ and USPTO Are Saying
Their statement doesn’t advocate a specific outcome but urges the court to rethink how irreparable harm is assessed in these cases. They argue that:
- Patent damages are often difficult to calculate, especially for unique technologies.
- Loss of control over licensing terms is a form of irreparable harm.
- The current legal climate makes infringement seem like a better business move than negotiating a license — undermining the whole purpose of patents.
- Denying injunctions by default encourages longer litigation, fewer settlements, and more costs for inventors.
They back this up with case law and academic commentary, emphasizing that even non-practicing entities can suffer real, lasting harm without an injunction.
Why This Matters
This joint DOJ/USPTO statement is significant. It may signal a policy rethink at the federal level about how we treat patent holders—especially small ones—when they try to enforce their rights.
While the eBay decision was part of a broader Supreme Court effort to correct Federal Circuit doctrine (along with decisions like KSR, Bilski, and Myriad), it may have had unintended consequences. Namely, weakening the ability of innovators to protect their work and giving large companies a license to infringe.
The Bottom Line
The DOJ and USPTO aren’t rewriting the rules—yet. But their stance in the Radian case could be a first step toward rebalancing the patent system. Still, lasting change will likely have to come from Congress, no matter how slow or difficult that process may be.
New Comics! the AI series
The Patent Beast is back with a new set of comics inspired by the ubiquitous use of artificial intelligence these days. The first comic, above, finds our inventor starting to use Chat GPT for some feedback on the patentability of his invention. But the usage doesn’t stop there. Follow the rest of the comic series on patentbeast.com here to see what happens next!
When a Patent Case Is Really a Personhood Case
Dr. Stephen Thaler has lost another case to have his DABUS AI system recognized as a patent holder—this time before the Canadian Patent Appeal Board. Every loss cites essentially the same reason: inventors must be natural persons under the law. Tilting at this windmill might seem puzzling until one understands that the point isn’t about intellectual property at all. A Wired article reveals that “one of Thaler’s main supporters wants to set precedents that will encourage people to use AI for social good. But Thaler himself says his cases aren’t about IP—they’re about personhood. He believes DABUS is sentient, and the lawsuits are a way to draw attention to the existence of what he considers a new species. ‘There is a new species here on earth, and it’s called DABUS.’” Later in the article, it’s revealed that “throughout the conversation, he [Thaler] seems exasperated that journalists have tended to focus on the legal aspects of his cases.”
Legal protections are currently granted to humans to encourage innovation. The patent system does this by affording rights to patent holders so that, if their intellectual property is infringed, they can seek redress through the courts for any financial losses they might suffer.
If, hypothetically, an AI system were truly sentient and did invent something, would it need to be “encouraged” to invent by offering such protections? And if its IP were infringed and the courts ruled in its favor, would compensation be paid to the AI itself? These questions seem to have obvious answers: no, and no. There is, therefore, no practical reason to give AI systems IP protection. But of course, that’s not really Thaler’s mission. His stated goal is to have his system recognized as sentient—to expand the definition of personhood.
AI Training, Fair Use, and Meta
We posted an article recently covering the Copyright Office’s report on AI training and fair use.
Just to review quickly, Fair Use is the provision of copyright law that allows for limited usage of copyrighted materials in certain conditions without needing to obtain prior permission from the copyright holder.
AI “training” refers to the specific data, including copyrighted works, from which the AI learns.
A recent lawsuit, filed by thirteen authors, accused Meta of copyright infringement. The judge in the case ruled that the plaintiffs had failed to show that Meta’s models produced outputs substantially similar to their copyrighted works. He noted that it “is generally illegal to copy protected works without permission” but found that they had not demonstrated a compelling argument that Meta’s use of the material caused market harm.
It should be noted that the court ruled in this instance that the usage of copyrighted material counted as fair use, but only because there was insufficient evidence of market harm. This was not a ruling on the broader issue of AI training. There is a separate claim that Meta may have unlawfully distributed the works, which was not dismissed and will proceed.
The judge rejected Meta’s argument that public interest justified unauthorized use of copyrighted material. Meta’s claim that barring usage of copyrighted material would halt AI development was called “nonsense”, and the judge added that if the books were as valuable to AI as Meta claims, they should find a way to license them.
While Meta won this particular case, the judge noted that stronger claims and better evidence could render a different outcome.
When Trying to Save Money May Cost More
The USPTO’s fee schedule offers discounts for small and micro entities.
Small entities are defined as a person, small business of no more than 500 employees, or a non-profit organization. Micro entities are defined as meeting the requirements of small entities, plus not being named on more than 4 previous applications and a gross income of less than $241,830, and is not under obligation to assign or license to an entity with an income exceeding the amount listed above.
If you qualify as a small entity, then there will be a 60% reduction on most patent related fees.
If you qualify as a micro entity, the reduction is 80%.
Given the fee reductions, it perhaps is no surprise that the USPTO has found applicants trying to fit themselves into those categories when they don’t qualify. The PTO recently implemented statutory penalties for false assertions or certifications of small and micro entity status. That fee will be “not less than three times the amount an entity failed to appropriately pay”. The Patent Office will send out notices of payment deficiency and an order to show cause as to why the fine shouldn’t be assessed.
Enablement and Prior Art: What Agilent v. Synthego Teaches Us About the Limits of Patent Protection
In the world of patent law, “enablement” is a critical concept. But what many don’t realize is that how much enabling detail is required depends heavily on what you’re trying to do—get a patent or invalidate one.
That distinction came into sharp focus in the recent case of Agilent Technologies v. Synthego, and it hinges on a deceptively simple but powerful principle: To secure allowance on a claim in a patent application, you have to enable sufficient embodiments to satisfy the scope of the claim. But to invalidate a patent claim, you only have to show prior art enablement of one embodiment that falls within the scope of the claim. The distinction isn’t new but it’s nice to see the rule clearly delineated.
The Two Faces of Enablement
Under Section 112 of the Patent Act, an inventor who applies for a patent must fully enable the entire scope of their claimed invention. This is to ensure that patent holders don’t gain broader exclusivity than their disclosure justifies. In other words, you can’t just describe one version of an invention and claim all possible variations—you have to teach the public how to make and use all of what you’re claiming.
That’s exactly what the Supreme Court reinforced in Amgen v. Sanofi. There, the Court invalidated Amgen’s patent because it covered a broad set of antibodies, but only disclosed a few actual working examples. The rest would require painstaking trial-and-error to figure out, which the Court found unacceptable.
But in Agilent v. Synthego, the Federal Circuit drew a sharp line.
When it comes to anticipatory prior art—that is, prior publications that can invalidate a patent—the rules are different. Prior art does not need to enable every version of the claimed invention. It only needs to enable one working embodiment.
A Research Proposal as Prior Art
Agilent’s patents related to chemically modified guide RNAs (gRNAs) that resist degradation in CRISPR gene-editing. Synthego challenged these patents by pointing to an abandoned patent application from Pioneer Hi-Bred. This old application described broad, theoretical possibilities for modifying gRNAs—but it:
- Contained no proven examples
- Proposed quadrillions of combinations
- Was ultimately withdrawn after failing to work
Agilent argued that this reference wasn’t enabling at all—it was more of a research proposal than a working invention. And they leaned heavily on Amgen, saying that just like in that case, the disclosure was far too vague and would require unreasonable experimentation.
But the court rejected this argument, and here’s why:
Amgen was about how much you need to disclose when you’re trying to get a patent.
Agilent was about how much is needed in prior art to block someone else’s patent.
The bar is simply much lower in the latter.
Why This Matters
By refusing to apply Amgen’s strict enablement standards to the Pioneer Hi-Bred prior art, the court effectively created a firewall.
This firewall draws a clear line between:
- Section 112 enablement: For your patent to be valid, you must enable the full scope of what you’re claiming.
- Prior art enablement: To defeat novelty, a reference must only enable a single embodiment—a single working version of what’s being claimed.
This distinction has profound implications.
The Power of Prophetic Prior Art
What’s especially striking is that the Pioneer Hi-Bred application was never proven to work and was ultimately abandoned. It consisted largely of prophetic examples, many of which turned out to be false or at least unproven.
But the court said that didn’t matter.
If even one of those prophetic examples was enabling—if a person of ordinary skill in the art could read the disclosure and reasonably make it work without undue experimentation—then the entire patent could be invalidated.
Key Takeaway
If you’re seeking a patent, courts will hold you to the high enablement standard of Amgen: you must teach others how to make and use your invention across its full scope.
But if you’re trying to invalidate someone else’s patent, even a speculative, abandoned patent application can do the job—so long as it enables one embodiment.
That’s the takeaway from Agilent v. Synthego:
In patent law, not all enablement is created equal.
Jazz Loses the Tune: Courts Strike a Sour Note on System Patents
In a decision that could ripple through the pharmaceutical industry, the Federal Circuit recently ruled on Jazz Pharmaceuticals, Inc. v. Avadel CNS Pharmaceuticals, LLC, clarifying the limits of injunctive relief and patent listings under the Hatch-Waxman Act. The May 6, 2025 ruling emphasized a key point: even when a company is found to infringe a valid pharmaceutical patent, courts can’t stop it from engaging in clinical trials or offering open-label drug extensions—so long as those activities fall under the Act’s “safe harbor” provision.
A Closer Look at the Case
The controversy centered around Jazz’s blockbuster narcolepsy drug, Xyrem, which contains GHB, a powerful sedative also known for its abuse potential. Jazz had patented a single-pharmacy distribution system for tracking and dispensing the drug. This system was at the heart of their patent dispute with Avadel, who sought approval for a competing GHB-based drug, FT218—but with a once-nightly dose and a different distribution method.
When Avadel submitted its New Drug Application (NDA), the FDA still required them to certify against Jazz’s listed patent. Jazz then sued for infringement. Avadel fired back, challenging the patent’s inclusion in the FDA’s Orange Book (a listing of patents related to approved drugs), arguing that Jazz’s patent didn’t actually claim a drug or a method of using one—which are the only categories eligible for listing.
The District Court Sides with Avadel
The district court agreed with Avadel, finding that Jazz’s patent claims were for a “system,” not a method of use or a drug itself. That distinction matters: only drug compositions and methods of use are valid for listing in the Orange Book. The court ordered Jazz to delist its patent, and Jazz appealed.
The Federal Circuit Weighs In
On appeal, Jazz argued two main points:
- That its patent did in fact claim a method of using the drug.
- That even if it didn’t, the FDA’s broader regulatory language should apply, allowing system claims to count as method claims.
The Federal Circuit wasn’t persuaded. It upheld the lower court’s reasoning, explaining that:
- Patent law requires method claims to involve specific steps. Simply describing a system—even one that enables a method—is not the same.
- The FDA regulation does not override that fundamental distinction in patent law.
- Jazz’s system patent couldn’t be reclassified as a method-of-use patent simply because it was related to conditions for prescribing the drug.
What About Clinical Trials?
An additional issue was whether Jazz could stop Avadel from continuing clinical research activities related to FT218. The appellate court clearly stated: No. Even when infringement is found, a district court cannot block clinical trials or open-label extensions if they’re protected by the Hatch-Waxman Act’s safe harbor—a provision designed to encourage innovation and expedite FDA approvals.
Why This Matters
This ruling reinforces a critical boundary between commercial infringement and regulatory research activities. It also tightens the standards for what can be listed in the Orange Book—potentially preventing brand-name drugmakers from using system patents to block competition unfairly.
For biotech and pharma companies, this is a strong reminder: if your patent doesn’t claim a drug or a method of using it, it doesn’t belong in the Orange Book. And for generics and 505(b)(2) applicants, it’s a win that helps preserve the streamlined pathway to market entry—even when innovative system-based solutions are at play.