After-Arising Technology Takes Center Stage at the Supreme Court (With Another Cameo by Thomas Edison)
We’ve been talking about In re Entresto[1] and MSN Pharmaceuticals’ petition for certiorari here and here. The crux of the case remains the same: if you wonder whether a patent can be undone by technology that didn’t exist when it was filed, MSN’s reply brief—and its spirited ode to Edison’s bamboo filament lightbulb—just made your day.
At stake is a clean, consequential question: may courts consider after-arising technology when deciding if a patent’s written description and enablement hold up? Petitioners say the Federal Circuit’s answers have been all over the map, with one line of cases allowing after-arising embodiments to expose overbreadth in genus claims, and another categorically forbidding that analysis. The reply brief frames the conflict crisply, casts this case as an ideal vehicle, and invites the Court to harmonize modern disclosure doctrine with first principles: the more you claim, the more you must enable.
The facts are tailor-made for that debate. Novartis’s earlier “combination” patent covered valsartan and sacubitril, but the commercial breakthrough—think $4B of sales in the US in 2024—came later: a non-covalent complex developed after extensive experimentation. Petitioners argue that this later-developed species—like Edison’s bamboo filament lightbulb—reveals the original genus claim swept too broadly, and that excluding such evidence creates a loophole that chills innovation and entrenches broad, early filings.
Why it matters to your business is straightforward. A grant could produce an Amgen[2]-adjacent ruling that clarifies how after-arising embodiments interact with written description and enablement, especially for genus claims in life sciences. That clarity—one way or the other—would affect portfolio strategy, freedom-to-operate assessments, and litigation risk on both sides of the “innovator/generic” aisle. In the meantime, watch this space. If bamboo can invalidate a lightbulb claim, a later-developed complex may yet unsettle a combination claim.
If you have questions about this Client Alert or are interested in additional details or guidance, please reach out to Greg Chopskie (greg.chopskie@pierferd.com) or your regular PierFerd contact for assistance.
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[1] In re Entresto, 125 F.4th 1090 (Fed. Cir. 2025).
[2] Amgen Inc. v. Sanofi, 598 U.S. 594 (2023).
