News — NEW YORK, Feb. 21, 2025 - On Feb. 10, 2025, the law firm and its client, patent owner Converter Manufacturing LLC (CM), filed a Petition for a Writ of Certiorari in the United States Supreme Court.
The Petition asks the Court to overrule Federal Circuit law which lowered a Supreme Court standard regarding the extent to which prior art must enable others to practice technology claimed in that art to invalidate a patent. The lowered Federal Circuit standard presumes that a prior art document enables others to practice whatever is described in the document. By contrast, as set forth in the Petition, the Supreme Court previously required that potentially invalidating prior art enable technology to the same degree as a patent must.
CM, whose licensee and affiliate sells the patented product – rolled-edge plastic food trays – under the "Clearly Clean Products" trade name is the owner of patents which disclosed and claimed products that had long been sought, but which, expert testimony revealed, could not be made by skilled artisans before CM's patents disclosed how. Before the U.S. Patent Office's PTAB tribunal (the Patent Trial and Appeal Board), the challenger of CM's patents cited prior art documents which recognized the need for the product and hypothesized about ways the product might be made. CM provided other contemporaneous published disclosures that showed that the processes disclosed in the cited prior art could not be practically employed. CM also introduced supporting evidence to the same effect, from both its own expert and the challenger's expert. Nonetheless, the PTAB held CM's patents invalid because the prior art was supposedly entitled to a presumption of enablement, according to the Federal Circuit's misinterpretation of the Supreme Court's precedent. In a further extension of the Federal Circuit's precedent, the PTAB held that the prior art was enabling because patentee CM had not proven that it was "impossible" to practice the prior art methods in ways disclosed in CM's patents. The Federal Circuit affirmed this further extension without issuing a formal opinion.
"Patents should not be nullified because they claim an invention that was only hinted at in science fiction or suggested in failed thought-experiments committed to paper," says Intellectual Property and Patent attorney at Norris McLaughlin, P.A. "If this law does not change, then patent owners will hereafter have to risk losing their patents unless they can prove that it is impossible to bring cited science fiction to life, which is an insurmountable burden and destroys the entire rationale for patenting – the notion that inventors (and not science fiction authors or mere futurists) should be rewarded for their inventions."
The Petition filed by Norris McLauglin, P.A. and CM provides the Supreme Court an opportunity to correct the Federal Circuit's and the PTAB's misinterpretation of the Supreme Court's precedent on the standard of enablement, as it is applied to prior art disclosures.
The Supreme Court requires that all amicus briefs filed in support of the petition be submitted on or before March 17, 2025. The Supreme Court provides a , and Sup. Ct. R. 37 provides the Court's more specific requirements not otherwise mentioned in the guide. Farco at Norris McLaughlin P.A. is counsel of record for Petitioner, Converter Manufacturing LLC.
About Joseph A. Farco, Esq.
As a registered patent attorney, Farco practices before the United States Patent and Trademark Office. He counsels clients from all over the world under America Invents Act (AIA) and pre-AIA rules to obtain patent protection in the form of utility and design patents. He has helped clients to obtain patents on their inventions through appeals to the Patent Trial and Appeal Board and been involved in challenges to patent rights under ex parte reexaminations and inter partes review proceedings. Farco uses his litigation and prosecution experience to provide opinions concerning patentability, non-infringement, and invalidity, to help his clients make well-informed intellectual property decisions for their business or avoid allegations of induced infringement and/or willful infringement of patents.
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Norris McLaughlin, P.A., is a multi-practice, commercial law firm with offices in New Jersey, New York, and Pennsylvania, delivering legal solutions to clients wherever they conduct their business, including nationally and internationally. The firm's nearly 130 attorneys practice in more than 25 legal disciplines and industry-focused groups and serve a wide range of clients, including small businesses, middle-market companies, and Fortune 500 corporations, as well as the private individuals and families who may own, lead, and/or manage those companies. Norris McLaughlin, P.A. is a member of Meritas®, a global alliance of leading independent law firms. To learn more, visit .
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