Cancer Research Technology Ltd. v. Barr Laboratories, Inc., No. 2010-1204 (Fed. Cir. Feb. 28, 2011) (en banc Order)

The ten active judges of the Federal Circuit considered Barr Laboratories’ petition for rehearing en banc to consider the effect of the panel opinion on the prosecution laches doctrine, but that petition was denied in a split 5-5 vote.  A majority of the active judges must vote in favor of a petition for rehearing en banc, thus, Barr Laboratories’ needed one more vote.  See Internal Operating Procedure No. 13.  Judge Kathleen O’Malley was recently elevated to the Federal Circuit, and voted in favor of rehearing the case en banc.

Judge Prost wrote an opinion dissenting from both the original panel opinion and the denial of the petition, which Judges Gajarsa, Moore, and O’Malley joined.  Judge Dyk raised additional concerns in a second written opinion dissenting from the denial of the petition.  Interestingly, Judge Lourie wrote the original panel majority opinion, and was joined by Judge Newman.  Both judges have had significant prior experience involving the prosecution of patents at large pharmaceutical and chemical companies prior to joining the bench.

In dissent of the denial of the petition, Judge Prost railed against a perceived abuse of the prosecution system by the patentee—a series of new application filings after the patent Examiner issued a first rejection, rather than a substantive response to the rejections.  While the original application was filed in 1982, active substantive prosecution did not begin until 1991, and a patent issued over eleven years after the original patent application was filed.  But instead of affirming the district court’s judgment that the doctrine of prosecution laches precluded enforcement of the patent, the en banc dissent concluded that the panel majority effectively narrowed the scope of the doctrine by requiring direct evidence of intervening rights by the party accused of infringement of that patent, contravening Supreme Court precedent and sound public policy concerns that underlie the doctrine.  Judge Prost focused on the harm to the accused infringer and the public after the patent issues, and deemed the panel majority position that intervening rights must be shown during prosecution as inflexible.  Judge Prost also noted the Supreme Court’s recent repeated cautions to the Federal Circuit that formalism in the patent law is disfavored.  In dissent, Judge Dyk added that he disfavors the “totality of the circumstances” test as it is no test at all, and would take the case en banc to determine the appropriate test that should be applied to a prosecution laches defense.

This case seems primed for a petition to the Supreme Court, should Barr Laboratories decide to pursue it further.

Read the original panel opinions here, and the Order denying the petition for rehearing en banc and the dissenting opinions here.

Cimline, Inc. v. Crafco, Inc., No. 2010-1348 (Fed. Cir. Mar. 2, 2011) (Judges Rader, Gajarsa, and Prost) (nonprecedential opinion)

Crafco hit a rocky road at the Federal Circuit after enjoying a smooth ride at the trial level.  The Federal Circuit held that Crafco’s patented sealant melters, which are used to melt blocks of sealant used to repair and seal road surfaces, are obvious.  The district court ruled on the obviousness issue on SJ in favor of the patentee and granted SJ that Cimline infringed the patent sua sponte.  Then the district court granted an injunction against Cimline’s sealant melter devices.  In an unusual procedural move, the Federal Circuit ruled in favor of Cimline on the obviousness issue, even though it had not filed a cross-motion for SJ of invalidity.   The court noted that the parties agreed at oral argument that there are no material issues of fact regarding the factual inquiries underlying the obviousness analysis, and concluded that “[t]his case presents the rare procedural occurrence” in which a cross-motion for SJ was not filed, but obviousness is amenable to complete adjudication upon appellate review.  In a number of other cases, the Federal Circuit has also used admissions and positions taken during oral arguments to dispose of issues, instead of sending them back to the trial court.

Read the original opinion here.

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