Page:Amgen Inc. v. Sanofi.pdf/21

Rh create a wide range of candidate antibodies and then screen each to see which happen to bind to PCSK9 in the right place and block it from binding to LDL receptors. See Part I–B, supra; 987 F. 3d, at 1088; 2019 WL 4058927, *10–*13. The second isn’t much different. It requires scientists to make substitutions to the amino acid sequences of antibodies known to work and then test the resulting antibodies to see if they do too—an uncertain prospect given the state of the art. See Parts I–A, I–B, supra; 987 F. 3d, at 1088; 2019 WL 4058927, *10–*13. Whether methods like a “roadmap” or “conservative substitution” might suffice to enable other claims in other patents—perhaps because, as this Court suggested in Incandescent Lamp, the inventor identifies a quality common to every functional embodiment, —they do not here. They leave a scientist about where Sawyer and Man left Edison: forced to engage in “painstaking experimentation” to see what works. 159 U. S., at 475. That is not enablement. More nearly, it is “a hunting license.” Brenner v. Manson, 383 U. S. 519, 536 (1966).

Think about it this way. “Imagine a combination lock with 100 tumblers, each of which can be set to 20 different positions.” Brief for Intellectual Property Law Professors and Scholars as Amici Curiae 20. “Through trial and error, imagine that an inventor finds and discloses 26 different successful lock combinations.” Ibid. But imagine, too, “that the inventor tries to claim much more, namely all successful combinations,” while instructing others “to randomly try a large set of combinations and then record the successful ones.” Id., at 21. Sure enough, that kind of “roadmap” would produce functional combinations. Ibid. But it would not enable others to make and use functional combinations; it would instead leave them to “random trial-and-error discovery.” Ibid. Like many analogies, this one may oversimplify a bit, but it captures the gist of the problem.

Failing in its primary argument that it has enabled all of the antibodies it claims, Amgen tries a few alternative lines