*1 ANDERSON, Bеfore Judge, Circuit BATTLE, Edgar Edgar H. d/b/a *, HILL and ESCHBACH Senior Circuit Home; H. Battle Funeral et Judges. al., Plaintiffs, individually, PER Taylor, CURIAM: L. and as the James of the Estates of James administrator Appeal judgment is taken from the Taylor, Taylor F. Jackson and Laura Myron Thompson Honorable H. denying deceased, Taylor Frances Louise 60(b)(4) the intervenors’ motion for relief Spence, Taylor, Taylor Debra Diane judgment. judgment from That was ac Stafford, Taylor Phillip Taylor, Gretta companied by a detailed memorandum or Elrod, individually and and Annie J. der, Co., Liberty Battle v. Nat’l Ins. Life David A. El executrix of the Estate of (N.D.Ala.1991). F.Supp. We have rod, deceased, Plaintiffs-Intervenors- carefully record, Judge reviewed the Appellants, Thompson’s dispositive opinion, order and argument and the briefs counsel. Oral
v. was heard in Atlanta on June 1992. LIFE INSUR LIBERTY NATIONAL COMPANY; Brown Service Fu presented any We are not with reversible ANCE Inc.; part Company, judge. error on the of the district Service neral Homes Alabama, judgment dismissing Company the case is Insurance situated, similarly Defen all others AFFIRMED. dants-Appellees.
No. 91-7700. Appeals,
United States Court
Eleventh Circuit.
Oct. 1992. Jr., Long, Don B. Johnston Barton Proc- CO., ATLANTIC THERMOPLASTICS Ala., Naff, Birmingham, tor & Swedlaw INC., B. Richard James Sullivan and Alexander, Jimmy Alexander Corder & Fox, Plaintiffs-Appellants, B. Plunk, P.C., Athens, Ala., plaintiffs- for intervenors-appellants. CORPORATION, FAYTEX Lucas, R. Lightfoot,
Warren B. William Jr., Lucas, Defendant/Cross- Lightfoot Bir- Franklin White & Appellant. Ala., mingham, Liberty for National Life Ins. Co. 91-1076, Nos. 91-1095. Crook, Campbell, Hill Andrew P. Shawn Appeals, States United Leitman, Campbell, Bir- Siegal, Payne & Federal Circuit. Ala., mingham, Aubrey Carr & Carr Services, Enterprise Inc. Aug. III, Ala., Stuart, Birmingham, George R.
for Funeral Director Class. Willcox, Pirozzоlo, Pirozzolo &
Jack R. Boston, Mass., argued, plain- McCarthy, * Eschbach, designation. Jesse E. Senior U.S. Cir- Honorable Circuit, sitting by Judge cuit for the Seventh *2 claims as product-by-process in brief, language him on the
tiffs-appellants. With limiting claim. 845.] [970 L. Binder. Richard was Loud, Lorusso, & M. Lorusso Anthony caselaw and light Supreme of Court In defendant, Mass., Boston, argued, for product-by-process history of brief, on the With him cross-appellant. infringe- acknowledges that this court counsel were Of M. Thomas Sanders. was to reference analysis proceeds with ment Alder, Bomster, Pollock & Shee- F. John Thus, process terms patent claims. George A. Providence, Inc., R.I. han, as lim- claims serve product-by-process in Loud, Va. Arlington, determining infringement. itations F.2d at 846.]
[970 exceptions. No REQUEST FOR REHEARING ON pointed succinctly Judge has As Lourie IN BANC unnecessary out, excursion was this whole dissenting from the NIES, Judge, Chief that claim patentee admitted because rehearing banc. of denial limit- was the ac- poll of requested that Having' “The read: The claim process. to the ed on whether the judges be taken circuit tive the method produced by innersole molded banc, and a reheard appeal should therefore, was, no occa- 1.” There of claim from the voting, I dissent so majority not how to determine review the law sion to express I consideration. of in banc denial It was not claim should be construed. merits. opinion on the no Nevertheless, for the case. an issue in reasons, panel devoted unexplained dissenting from Judge, RICH, Circuit to (19 pages) opinion of its of over 60% rehearing in banc. of denial law instead restatement of the undertake a case, its deciding the simply Judge’s request join Chief I pro- to are here We not proper function. and Newman Judges Lourie opinions re- Such of the law. restatements panel vide rehearing. support of in banc an made without not be statements should down with- handed opinion herein parties to be all affected opportunity for objectors of the I one objection. was out are parties here The affected heard from. panel has reasons. principal three largely inner soles but not the an arm of vendors its function misapprehended industry, particularly the entire chemical a rule this has violated court. It pharmaceutical manufacturers. its creation. existed since has court which early Supreme has misconstrued It refers to the opinion Judge Newman’s justify relies to it opinions on which Court I drug. To this producing a new cost of rule. violation Roger A. statement a recent would add Brooks, Vice President an Assistant other members point out to the I wish to Association Manufacturers be, Pharmaceutical bar, just if need of this court 1992, meeting May (PMA) at the made Judge New- panel, as what p. (Bulletin, April-June AIPLA casual is no it, This has done. man calls the more pointing out 475). After gone on opinion. slip in an of PMA members than research-based beyond the needs unnecessary excursion an proper- highly dependent it, review, case, it sees to of this intellectual incentive provide ty protection entire field said: capital, Mr. Brooks risk invest applicable rule a universal lay down innova- industry, pharmaceutical in these words: In the all such claims And R & premium cost. law], tion comes of case [summarizing view Thus generally is measured productivity D before the patentability actions in both abili- nation’s individual’s or terms before actions infringement CCPA and new chemical we call develop what ty to regional cir- Supreme entities, NCEs. regarded the cuits, courts explain they are all Judge Newman to what an NCE contin- developing The cost of say I speak for all of us and need example in about For year. each ues to rise more. moving an NCE from the cost million. laboratory $54 to market quote from the BNA concluding, *3 nearly risen figure has this By report on this case their edito- PTC Journal per NCE. to over million $230 fivefold 286): (Vol. p. comment rial “only one out of that pointed out He then might fairly in One PTCJ COMMENT: ever 10,000 compounds discovered 5,000 or vitality of the Federal quire about the of inno- kind market.” This make it to the light panel rule” in “prior Circuit’s encouraged going to be D not R & is vative in footnote ruling. The rationale this by the Atlantic laid down just rule cited another following Scripps for not panel. juve Eleventh Circuit footnote from an (see case Tucker v. nile incarceration of the Atlantic egregious act The most 1030, 1037, (CA7 F.2d n. Phyfer, disregard, for however, is its defiant panel, authority. 1987) cited no which turn nearly ten-year in this court’s first time Scripps precedential status precedent сan be that no history, rule of its clouded, but ruling to have been appears save an in disregarded or overruled may still entitled to cite panels future ground feeble court, stated on the but banc repudiated expressly is it since it opinion precedential authors of that this case the correction in While here. Supreme to the reference “ruled without Supreme Court involved overlooked involving product cases previous Court’s per logic would seem to precedent, the The At- limitations.” with other CCPA and mit the invocation panel continued: lantic precedent as well. CAFC Supreme that fails to consider A decision loquitur. ipsa Res if the control precedent does not determines panel] Atlantic court another Fortunately, court has this [i.e. Scripps panel panel, I ignored case] that the yet to be [in rule—as conclu- a different conflicting have reached there are would where believe—that controlling precedent it had considered controls. sion if the earlier precedents, eliminat- have been precedent. But conflict should law. to avoid confusion in ed in banc only insulting This is Markey, Judge (Chief Judge New- panel NEWMAN, Judge, whom with Circuit mutiny. It it is visiting judge), and a man join, LOURIE, Judges, Circuit RICH and illegal. is heresy. It court’s denial dissenting from the indeed, that to observe interesting, It is rehearing en banc. currently judges dissent- the four three of ago, Feder- years exactly ten Almost this case banc failure ing from the eliminate in order to was formed al Circuit pro- spent their entire have who are those patent among law circuits inconsistent procuring and in the law careers fessional Federal that the expected It was cases. against defending patents litigating —and internally consist- produce would Circuit judges had earlier these Two of them. effect, so national body of law of ent Their as research chemists. careers on its de- industry rely could technological else, the involved, anything beyond work in- technological benefitting cisions, in turn arguing about interpreting, and writing, surely not intended It was novation. the whole law which around Circuit Federal panels of different is more than It infringement revolves. conflicting law. deliberately issue would have considered that we possible little bit are not opinion panel differences Since At- on which the cases Supreme Court adopted the Circuit once, the Federal impossible, relies, more than lantic resolving in- procedures en banc not usual we do for the fact accounts However, in At- the panel conflicts. ternal interpreta- panel’s agree with the Cor- Faytex v. Thermoplastics Co. lantic efforts The extensive them. tion of recogni- formal had have USPQ2d 1481 Such inventions 834, 23 poration, to be and continue at least since disagreed with a tion having (Fed.Cir.1992), inventors, in accord- patented Research made Scripps Clinic & point of law set Genentech, Inc., procedures 927 F.2d forth ance with Foundation (Fed.Cir.1991), Examining Procedure. USPQ2d Patent Manual of conflict procedure for to follow rеfused appears when usually class of claim This conflicting overtly Thus these resolution. biological a chemical or the invention report- official repose in the decisions will complexity that such structural product of resolved, but day to be ers, suppose some indepen- defined can not be disarray. law in place this meanwhile premise terms. structural dent litigants, public, or not serve This does *4 Rule of called the has been such claims to entitled know are judges, or trial who patent- provides way of Necessity, for it interpret a will Federal Circuit how struc- whose ing or discoveries inventions claims, product-by-process class of certain sufficiently or known knowable is ture not luck of draw on the depending without a dis- Such objectively. to be described panel. appellate of the complex blood by the illustrated covery is from the dissent respectfully I Thus of the subject is the clotting protein this issue to consider not decision court’s Scripps. product-by-process claims from also must dissent I en banc. product-by-process Scripps class of The reading precedent, of and panel’s Atlantic claims from the quite different claim is conclusion. policy-driven from panel. by the Atlantic placed at issue now I are here at issue claims The Atlantic claims, such as process” of the “product Inventions The Claimed found process is may be allowed held that this court supra, Scripps, pointed Corporation Faytex patentable. therе at claims “product-by-process” pros- estopped out that Atlantic interpreted as properly issue were taking position history from ecution product was how claims, independent of process limita- of claims are free that these followed the Scripps court The made. argued to the exam- tions, for Atlantic had and of Court Customs precedent of the sole- patentable claims were iner that these Claims,1 of the Court Appeals and Patent had been process examined ly because Court Supreme with is consistent and ob- Allowance was patentable. found and precedent in discuss this precedent. shall basis. tained on that the varieties detail, for it illustrates some claims, different separated product/proeess had applicant Atlantic The them, inap- and interprets patent law ways the claims a divisional into his interpreta- applying the propriateness of of the examiner’s as a application, result the facts of claim to of one class prod- tion between requirement for restriction claim. class of another Atlantic The process and claims. uct “product claims and process some- class Scripps claims The together and process” grouped claims were called “true” times entirely on based patent, in one were issued and validi- patentability claims, in that their These process.2 examination novelty unobvious- depends on ty at is- only claims process immaterial claims and it is product, ness of Atlantic’s trial. Atlantic patentable. sue at the is also process whether claims are States, Such Corporation v. United South 1. In patentable limitations with (Fed.Cir.1982) (en claims USPQ 657 any divisional conflict with would precedent adopted banc), Circuit Federal composi- containing patentable, structural and and Patent of Customs of the Court the law patentable limitations. tional limitations of Claims. and the Court Appeals acceptable in the would not application claims. divisional argued the PTO: to for Atlantic 2. Counsel original). (emphases in at 3066 Appendix Joint years ing plastic until two with the foamed claims were not issued innersole that panel subject is the of the litigation. nine months later. The Atlantic Atlantic panel’s argument contrary oral that these claims view that it is to was told at public permit interest rejected on reexamination. an inventor have been patent protection have useful for a new inter- Applying the normal rules of claim when the can not be distin- pretation, apparent it is that there is no guished in the claim other than refer- conflict that the need whatsoever for the made, ence to how it was surely not an panel created. The claims in At- implementation of 35 101: U.S.C. § Scripps lantic those of are different any Whoever invents or discovers new long history recog- classes of awith machine, process, and useful manufac- nizing history exem- difference. This ture, matter, composition any plified only in the decisions of the thereof, improvement new and useful Appeals Patent Court Customs and therefor, subject obtain Claims, the Court of but also the deci- requirements the conditions and of this Supreme region- and the sions title. circuit al courts. The stretch Atlan- Appeals and Patent tic to reach out for the deci- Court Customs law, recognized composition that a new of mat- *5 unnecessary in as well as incor- sion is may complexity ter be of such order practice. unnecessary reject rect in It is to point “particularly distinctly to out and (or to accept) Scripps decision order it, required by claim” as 35 U.S.C. I this fur- § decide Atlantic. shall discuss may reference be made to how it was ther, ob- policy aspects, I but first touch on way statutory purpose In tained. panel tells us that it is for the Atlantic enabling inventor of a new and unob- public policy that has driven its action. therefor”, product patent vious to “obtain a Aspects Policy implemented. 35 U.S.C. can be § purpose panel tells us that it is need not belabor that the The Atlantic law, patent promote to contrary public to the interest to allow the the United States arts, biologi- progress of science and useful is of a novel and unobvious inventor by eliminating patent useful product, the structure is not not served cal for which protection technological products. for new objectively it is not com- definable because known, product one reads that the cost of research pletely to сlaim the without When development drug of a is well over process by it was and new limitation to the which dollars, million must won- two hundred one made. The believes that the inventor biological public interest served now complex a chemical or der at of such announced that a to the Federal Circuit has composition must be limited the same biotechnology, incapable if product of product was obtained new process which definition, may inventor, independent structural lest and which is described patent pro- may product have useful patent get in the or the inventor and his/her tection, depending on Federal Circuit might which way of commercializers who later panel is drawn.3 process to make the same use a different product. that there long recognized It has been unobvi- novelty and products are for which policy cuts to the heart of the
This action established, for which can be but raising questions of innova- ousness system, patent fully law, product is not fairness, of the as as the structure incentive and well tion patenting such This mode of deal- known. not mentioned briefs that were product alleged biotechnology "pub- to have "cloned” the so-called matters of dispute re- production. That heavily commer- commercial intertwined with lic” interest court, judice. and is sub point. the district an abstract manded to This is not cial interests. on the law panel's attack Scripps, collateral The Atlantic interests are illustrated Commercial case, deсlining to allow en pending patented a while obtained the the inventor had where review, confidence in not enhance techniques banc does product by complex that consumed process. infringer judicial years, accused while the several illustrate, con- claims that the cases century. As a Such for over ucts existed appear process terms product and other new tain both patented, like product can situations, of require- assortment of factual it meets products, only when are: Applying common patentability. most product ments of patentabili- interpretation to the same claim unobvious, is new (1) product and when impor- infringement validity, and ty, definition; —an independent capable of but is not to Federal Circuit of the tant contribution obvious, but (2) product is old or when the is enforce- stability in the law—the new; process is This fol- product claims. able like other unobvious, (3) product new and Court of Claims from CCPA lows (e.g. process-based limitation but has no law contravenes precedent, and product).4 “molded" precedent. (2) class Type includes the Atlantic the standard provides patent product A claim; are examined such claims develop the the inventor opportunity to novel- claims, validity depends on the their invention, to commercialize process, ty and unobviousness others, publish the scientific license it to process is infringed only when the they are go results, about general (1) Scripps class Type is the used. patent law is of innovation. business claim; such are examined activities, with ac- these intended to foster depends on the novel- validity their poli- public. A benefits companying product, and ty and unobviousness complex chemical change cy aimed however they infringed inventions, change that biological (2) (3) Indeed, types claims of made. of useful inventions deprive such “product-by- properly called are not by judges in- if protection, enacted *6 claims, is used with if that term process” should a minimum legislators, stead of precision. done en banc. be classes, there- these and variations All of litigated cases. The of, II have occurred depends, of is used of claim that form PRECEDENT In course, the invention. the nature of on applied litigated the courts have each case panel states that the Atlantic The cases facts of appropriate to the Scripps was the law conclusion that support CCPA, the invention. The particular to the class wrongly do relate decided Claims, regional circuit and the of claim that Court “true” of types interpreted these have various the cases courts Scripps. Most was at issue their sub- in accordance with on do not panel relies the Atlantic Supreme Indeed, has Court. most stance. So products. even concern new interpreta- approached has courts have pitfall that courts avoided have way: have con- Atlantic; they tion in the classical colleagues befallen оur prosecution specification, the in accord- sidered courts, interpreting claims most prior art. The Atlantic history, and the speci- criteria of with the classical ance simply lumped all of these history, fication, prosecution into and inventions classes and claims to see what art, simply looked have law, distressingly su- in a one-rule-fits-all was, interpreted the the invention perficial treatment. accordingly. 682, 679, Bridgeford, 149 ing Mirabel, In re 357 Product-by-Process Claims: A In E.P. 1966); 55, (CCPA USPQ Off. Trademark Perspective, 68 J.Pat. & Practical (2) process limita- (1986), "product into three claims with Soc'y the cases are divided tion”; follows: categories he defines which (3) has been process “a limitation cases where by setting (1)where product is "defined structural”, part of and therefore construed as process by is made. It which it forth the product. so 'the invention important bear in mind that ”, quot- at process’ 3-4. defined is a princi- respected The CCPA the Painter the cases relied illustrate with I shall 1216, 1218, ple. Hughes, In re 496 F.2d panel. In by the Atlantic (CCPA 1974) USPQ 107-08 Claims and Court The CCPA that “at least since it court remarked 1891” permissible to claim a new has been Ap- and Patent The Court of Customs terms, describing process it with of Claims have both peals and the Court calls, in the inventor when patent office dealt with what Examining Proce- Patent the Manual incapable that his invention is finds dure, “product-by-process” claim. solely by physi- description structure or at recognized a claim was need for such cal characteristics. Painter, 1891 C.D. early as In re least as USPQ at 108. 1891): (Comm’r Pats. 57 O.G. 357 F.2d Bridgeford, In re argument to establish requires no It (CCPA 1966) the issue before the claim for proposition that as a rule a court there was same-inven- was whether not be of manufacture should an article patenting tion double between producing that defined product-by-process claims. The claims and hand, a man the other article. On ex- there was. The court CCPA held that right his to a an invention has made product-by-process claims are plained that it, right a claim or his unlimited claims to the it, defining is not to be deter- properly steps in the claim: English by the limitations mined [by product- that an the case so defined language. When arises the invention thing, a is a new is a and not a by-process article of manufacture claim] invention, thing, and embodies process. useful de- properly be article cannot and that (emphases Id. at prior art discriminated from fined original). than reference otherwise court discussed vari- Bridgeford it, present- a case is producing product can ways in which a chemical ous exception to the ed constitutes claimed: rule. invention be defined Whether (emphasis original and at 200-01 1891 C.D. *7 compound, structure of the terms of the added). characteristics, byor physical or its novel and holding recognized that new This a by process defining it in terms of the patented an arti- can be article inventive case, proper produced or in a it is which “by to cle, although reference it is defined one of these employing more than is as producing it”. This process of the invention, defining the methods of century ago. it was a important today as invention is on the right patent to a im- obligation that the statute consideration, subject to condi- ultimate patent office and courts poses on the 112. “In a in 35 U.S.C. tions set forth way, permits for it in this nicely met appli- that an not mean proper does case” thing” invented that was and useful “new de- impossibility of prove the cant must such, inadequa- despite the claimed as to be using than other fining the invention “properly de- to language or science cy of methods. of the above more than one it. formal- Painter fine discriminate” and 682-83, USPQ The court at 58. 149 scientists, Id. at de- known ized is still what prod- that a position explicitly rejected that have been great advances spite the simply a broader claim is uct-by-process and in there is more heaven made: claim,5 clarifying an process version of a objec- in to define know how earth than we stating: decision earlier terms. tive structural (citations USPQ n. at 58 5 149 F.2d at 682 n. omitted), recognized have that "some courts The CCPA 5. some claims there are prod- indeed covering only a claims as such construed construction —such the correct in which this is particular process set forth by the uct made se”, the Atlantic claims. product per and not to the the claim showing the burden cant language in re] is some [In there While patent- products are prior art USPQ 585 178, 76 claimed F.2d Freeman [166 ably the contention distinct. 1948) support (CCPA to] prima faсie Id. 357 claim: was that Brown mining Id. at culties faced lowered burden it is included oxygen-activated original). and that can not be a The court Brown ly claim claimed product is a perfectly by-process that a ing here far fers cult. ... that when In In re the It must lack of tical with it is steps which must claim, a product claimed single catalyst was made. (CCPA patentable. made, as this is inconsistent patentability of 535, 173 only “in F.2d at particularly physical description of Brown, and not invention,” (76 USPQ at described rejection based it must had not We are patentability acceptable one they therefore 1972) reasonably appears or patentability claim makes obviousness by the admitted, product,, only scope” from on the prior art discloses explained catalyst, description in n. therefore shown be overruled. ain slightly different patent office other point out and the claim court examiner at 688 recognized the claims method established. product-by-process however, of a for this determination than that the The court alternatively on “are that there recited so 531, 173 type steps by which a USPQ with explained (emphases product that long as the the claims directed more diffi- to be a claim dif- our in deter- claiming that product showing product- class distinct- at 58 product 587) so a opinion USPQ hold- diffi- iden- than type held way is a the n. plained that whether USPQ 145 part vious, stating that a 300 F.2d uct: steps, that when omitted). The court although it included is not (CCPA The court Thus our vious. product.” ticularly In In re subject mattеr as pointed out placed no ification as his invention “The addition ably cannot that ences between ences to glass with appears U.S.C. claims his “By patentability held known, available, claim, even statute, [*] invention.” distinguishable 1962), a case in which the comparison of 112. impart unpatentable. 945, 950, concludes with “conventional” Pilkington, (CCPA point out determine that limitations inquiry product invention, [*] and thus the sheet and claimed 35 a new Pilkington the statute of a method question applicant patentability U.S.C. them USPQ 1969) best a whole would in [*] product is not here With itself an quoted In re recitation of a new method process, can not whether accordance on how from the otherwise so 411 F.2d glass are such that available *8 112, the court appellant’s must be claims which [*] is new and that in long what he distinctly claim allows again observed patentability step Congress an as to the old any differ- [*] in 1345, 162 distinctly (citations applicant old the be unob- claiming claiming way: mind, it directed with regards had ex- Dilnot, patent- refer- unob- sheet prod- spec- step, par- [*] art, has im- 35 USPQ is 148 1349-50, statute at 103 of the 162 102 or section at either 411 F.2d Id. 1013, acceptable. 394 eminently fair and Steppan, re (quoting In 1968)) (CCPA 143, USPQ 148 1019, 156 court 535, USPQ at 688. 173 Id. at conclud- The court Steppan). in (emphasis fair”, under “eminently it thus viewed appli- ed: circumstances, to shift to these drying high purity [applicant’s] to obtain maltose differences between [T]he crystalline powder do form glass of the art in ... glass and particularly sus- to us to be appear high [3]adding purity crystalline said definition the conventional ceptible to powder maltose to foods and drinks as properties Un- recitation structure. sweetener. the essential added circumstances, it to us seems der 67-68, 190 USPQ at at 16. The Solicitor Id. product-by-process claim present that argued, creatively, that is stated to have requirements U.S.C. satisfies analogous “product- to a step the third appropriate here. 112 and is in that the by-process” used 1349-50, USPQ at 148 411 F.2d step light obvious in the third omitted). (footnote pointed out The court in steps, first and that “some courts two independently must be “product-by- limit infringement suits” product-by- and that use of patentable, process used”. The process claims to the product satis- process form describe remarked that: CCPA requirements of section fied product- This court ... does not construe 742, Fessmann, 489 F.2d In In re parte in ex by-process claims case 1974) (CCPA again USPQ the court product formed limited to the product-by-process explained the use of specific recited. product is not when the invented n. 3. at 69 n. at 17 independent definition. susceptible of plain process is a The claim Hirao to the extra burden court referred Although this case is far removed claim. patenta- applicant to establish placed on the Scripps class of claim and from the and stated: product, such a bility of rests, response premises on which it Brown, saying court was effect In argument the court the Solicitor’s said: a lesser bears Patent Office claim, although re- A making a case of proof in out burden citing subject mаtter claim product-by- prima facie obviousness made, is still a terms of it how peculiar of their process claims because claim. than would be case nature USPQ 17. Id. at conven- is claimed the more Luck, USPQ 523 476 F.2d In re tional fashion. (CCPA 1973) relied on the Atlan- is also court at 326. The Id. at applicant claimed panel. Luck tic In not overcome appellant had held that the claim includ- lamp bulb wherein coated case obvious- prima facie the examiner’s coating was description of how the aed compounds, prior art on similar ness based applied: that the therefore lamp- light-transmitting 1. A hollow unpatentable, whether claims were adapted to bulb-shaped glass member was new. radiations, a coat- source surround a USPQ 15 Hirao, 535 F.2d re external surface ing on the carried 1976) by the Atlantic (CCPA is relied on member, compris- coating said glass said was: in Hirao panel. The ing a of: mixture preparing foods process for 1. A consisting essentially of (a) polymer protected mildly, and sweetened drinks *9 having a tack polymethyl-methacrylate reaction, discoloration, Strecker’s against point ... compris- absorption, which and moisture (b) organofunctional silane ... ... an es: amylase, [1] adding a under such 1,6-glueosidase and b- conditions in a (c) ... an additive organic substance straight to coating having produce (d) to been affixed said quantity sufficient a by applying member thereon glass amylose ... said chain to [2] the action subjecting the b-amylase resulting purifying amylose liquid organic therein said polymer, said solvent having organofunc- dissolved process a limitation organic is not saved and said additive silane tional 1234, 165-66. USPQ claim. Id. at glass substance, member said coated being baked. thereafter to see this relates It is indeed hard how type product-by-process to USPQ The CCPA at 524. Id. at claim, product was found to be where the may includ- steps process explained that unobvious, patentable was new and product, to define a claim order ed in independent process. of the product distinguishing and to aid Examining art: Pro- prior Patent from Manual of proof special states the burden cedure application, it is method As for the examining product-by-process claims: may product claims that well established 706.03(e) prior When the M.P.E.P. partial- wholly to steps § include reasonably product art discloses In re product. See claimed ly define the with or either identical appears to be therein. To Brown, the cases cited only slightly different than dis- process limitations these the extent claimed in a art, prior over tinguish alternatively on either rejection based given the same considera- they must be appro- is 103 of the statute section 102 or product characteris- tion as traditional matter, practical the Patent priate. As a tics. equipped to is and Trademark Office USPQ (emphasis in at 525 Id. at products by myriad of manufacture held original). The court that obtain put it and then processes before product from distinguish the terms did not physical products and make prior art easy see how to prior It is art. A burden comparisons therewith. lesser supports the Atlantic purportedly Luck out a case of proof required to make CCPA, holding while thesis. Indeed product-by- facie prima obviousness unpatentable Luck’s invention that peculiar of their process claims because art, that reaffirmed prior based product is claimed in than when a nature product claims that it well established fashion. the conventional wholly or process steps include (citations omit M.P.E.P.Rev. Oct. product. the claimed partially define ted). Donald Chi Although commentator a 1974 revision states that sum rejects the Painter ne “squarely re cited In M.P.E.P. panel also The Atlantic Chisum, rule”, Patents Donald S. cessity Avery, 518 F.2d (1991), logic of 8.05[3], at 1975), at issue was: 8-91 (CCPA wherein claim § obscure, because particularly conclusion is me- product of the magnesium 23. The la months also observes two Chisum 1, charac- process of claim tallothermic Hughes reaffirmed ter the CCPA composition by a content terized in rule. Id. at 8-92. Painter than about impurities less metallic practical rule is a solution The Painter of between ppm, and of silicon whereby law and problem, important ppm. and 300 about 50 adapted complex products practice are 1230, 186 at 162. purposes of the implement the order to Avery old, although ar- found to be to serve rule patent law. This continues from was different his gued that purposes law.6 therefore process, and prior art recognized routinely of Claims new and unobvi- product was the claimed claimed held that The CCPA ous. “[t]he by how the unlimited completely disclosed product is Containers, Inc. made. In Tri-Wall unpatentable product was art,” stating that an by making simply a sam- evolving anee with section patent law to 6. Accommodation Argoudelis, example See In re *10 ple publicly Another available. technologies unusual. is not law, 1970). whereby 1390, (CCPA USPQ certain bio- deposit 99 is seen logical products the F.2d 168 described, compli- be
1289
750-51,
States,
748,
establishing an
F.2d
187
with evidence
unobvious
408
v. United
118-19,
326,
116,
product
cert.
difference between the claimed
161
Ct.Cl.
78,
denied,
828,
prior
product....
396 U.S.
S.Ct.
and the
art
(1969),
on-
applied
the court
L.Ed.2d 79
803,
(citations
Id. at
at 292-93
prod
although the
product,
bar to the
sale
omitted).
by
made
uct that had been on sale was
Scripps
the Federal Circuit continued
process from that stated
different
apply
the established law of the CCPA
find
court stated that “As the
claim. The
Claims,
Court of
accordance with
show,
prior
product
art
ings of fact
Corp.
the mandate of South
As observed
structurally identi
product
claimed
3,
supra
infringement
at n.
of
issue
cal”,
explained:
Scripps
these
claims was remanded for
product
It
is well established that
expressed
opinion
trial. This court
no
on
is not
by
a new
claimed as made
issue,
the merits of that
on which the factu-
product itself
patentable unless the
“undeveloped”.7
al record was
Patent,
U.S.
Wood-Paper
new. The
(1874),
(23 Wall.) 566,
L.Ed.
596 [23
31]
Supreme
The
Decisions
Court
v. Badische Anilin & Soda
Cochrane
Although
Supreme
Court has not
455,
Fabrik, 111
S.Ct.
U.S.
[4
having
any
dealt with
case
the Paint-
(1984).... the addition
[Ujnless shown that the progress it is of techno- adapted the law to the pro- to specification] was followed logical v. BASF invention. Cochrane [the article, or unless it defendants’ duce the fairly prejudge question read to could not be that the article Painter, is shown and to restrict confronted any process, the de- other produced the march of sci- capabilities of 1884 identified as article cannot be fendants’ of the common law and the evolution ence specifi- process of product of the [the patents. cation]. perhaps helpful to remember It is 310, 4 at 464. S.Ct. did not set the period the claims of Further, phrase “here- claim used the today, sim- patent, but periphery “substantially as in described” instead of the invention. See the core ply stated described”, to which Robinson a difference Claims, Deller, at 44- A.W. Patent § significance: to attach appears 1971): (2d ed. used, refers the word “described” When definition, the days old of central In the Description, as well as Claim as de- [“substantially use of the above interpreta- in the may thus aid and either was custom- or similar words scribed”] expressed or Whether tion of the other. sys- peripheral ary. present Under the general terms of they limit the implied, employed. tem, practically never they are out specific features set the Claim in- there was The courts decided whеther though neither these Description, really had light of what fringement, specified”, con- nor the one “as phrases, invented. been using the mode of the Claim to that fines Sargent, 120 holding of Plummer previously de- which has been invention (1887), L.Ed. 737 7 S.Ct. U.S. “substantially phrase scribed. panel, again by the Atlantic also relied forth” is of a purposes set and for the approach. judicial illustrates These are words character. different as a new claimed product was Plummer limitation, unless should not be used iron, “substantially manufacture, a bronzed special have their they intended to Descrip- as described”: They refer to signification. 112) failing provide of 35 U.S.C. is the new manufacture § I claim ...
What
what
definite statement of
he
described, consisting
iron “distinct and
hereinabove
new,
to be his invention.”
claims to be
in imitation
bronze
ornamented
*13
369,
901, USPQ
at 468.
heat, substantially
at
58 S.Ct. at
Id.
oil and
application of
descrip-
found the
Specifically, the Court
described.
grains as “of such size and
tion of the
445,
prior
642. The
art
7 S.Ct. at
Id. at
sagging
prevent
as to
substantial
contour
by the
bronzed
iron that was
described
“inadequate as a
offsetting” to be
de-
heat”,
in
the words
“application of oil and
characteristics of
scription of the structural
found non-
circuit court had
the claim. The
902,
370,
at
58 S.Ct. at
grains.”
Id.
defendant had
infringement because the
stated that the
at 469. The Court
prior
process
of the
simply followed
by reference to
claims could not be saved
448, 7
at 643. The Su-
at
S.Ct.
art.
Id.
specification
specification because the
agreed,
straightforward
preme
in
Court
inadequate:
too was
prior
in view of the
art:
interpretation
claim
may
assuming
definiteness
be
Even
necessarily
from this
to follow
It seems
by
imparted
to the
claim
patents
Tucker
either that the
view
purported-
specification which
part of the
anticipation practiced
by
void
reason
making
only a method of
ly details
patented
art],
that the
prior
[the
[patented]
product,
description
of the
restricted to
process
product must be
process is
silent as to
nature
likewise
exactly what is described....
product.
of the filament
449,
thus
tions
The Circuit Courts
question
The
at
at
Id.
invalidity
on
based
the court was
before
deci-
regional circuit court
Although the
depended on
in turn
anticipation, which
in the Federal Cir-
precedent
are not
sions
foam
to the
“volume” referred
whether the
they
support
do not
cuit,
that
point
I
out
that “because
Stating
mold.
or to the
of the Atlan-
approach
one-rule-fits-all
we
interpretations,
capable of two
claim is
re-
The
reached
panel.
results
tic
the words
looking
justified
behind
circuits,
before formation
gional
at
specification”, id.
to the
the claim
Circuit,
broadly as do the
vary as
Federal
that
concluded
USPQ at
thе court
Again, they
based.
on which
facts
mold, not the
referred
the volume
cases cited
my
limit
review to
will
foam.
dis-
my purpose in this
panel, for
“suspicion
court, having resolved
correct law
what is the
is not to decide
sent
process,
the words
describe
situations,
ex-
that
but to
Painter/Scripps
claim could
held
product”,
not the
that
should have been
why
question
plain
foam were
infringed
unless
not be
en banc.
taken
at
processes”.
machines and
other
having the volume stated
mold
made in a
concluded
279, USPQ 61.
court
court,
yielding to
the claim.
Paeco
new, and
tribunals,
was not
general-
the claimed stitch
that
temptation
appellate
Judge Learned
interpreta-
invalid.
claim
held the
straightforward
ized this
court,
Hand,
stated:
patent granted
writing
“A
for the
into the dictum
tion
describing
one
on a
possible
pat-
Conceivably might
it
be
products
to identical
grants monopoly
no
product of a
product merely as the
ent a
process.” Id.
a different
manufactured
though it were
process, even
machine
Paeco,
on its
holding of
based
Thus the
ways....
it
if made in
anticipated
other
facts,
into the
converted
particular
infringed by
case not be
would
appears
pronouncement
generalized
machine
product of the
anything but the
Lipscomb, Lipscomb’s Walker
3 E.B.
process, ...
1985),
(3d
p.
Patents,
ed.
11.19
§
pat-
on the
speculated
thus
The court
re-
panel. Lipscomb
by the Atlantic
cited
(those
products
entability of claims
old
statement that
for his broad
lies on Paecо
ways”) if lim-
if
in other
“anticipated made
used,
always
process must
the same
process by
machine or
to the new
ited
circumstances, neglecting to
whatever
*15
does not deal
made. Buono
it was
prod-
among
distinguish
new
known
Al-
even in dictum.
products,
with new
significant claim
inven-
other
ucts and
panel makes much of
though the Atlantic
3, supra, and ac-
n.
tion differences. See
case,
relevance.
must wonder at its
one
companying text.
knowing
indeed be interested
I would
byon
the
relied
Atlantic
The other cases
patentability
Judge
view of the
Hand’s
vintage
Pae-
of much older
than
panel are
biological
products of chemical
new
v.
In
Carbon Co. Western
co.
National
structure,
fully
not
when the structure
94, 97, USPQ
Co.,
F.2d
35
93
Shade Cloth
product has been
but
describable
Cir.1937),
denied,
404,
(7th
304
cert.
407
This
and unobvious.
proved to be new
1039,
1535
82 L.Ed.
58 S.Ct.
U.S.
case, however,
us that view.
does not offer
product
to a carbon
(1938)the
case was
reasoning, as that
The Buono
masks).
(used
product
was
gas
decided,
that of Downes
is consistent with
limita
solely
in terms
functional
claimed
Co., 150 F.
Development
Teter-Heany
v.
viz.,
had a
tions,
carbon
retentive
denied,
Cir.),
205 U.S.
(3d
cert.
per cent
a life
less than 20
value of not
(1907),
also
51 L.Ed.
27 S.Ct.
invali
The court
of 225 minutes.
service
Typical
panel.
relied
on
they were
claims because
dated the
product claims were:
solely
functional terms:
phrased
manufacture, an elec-
article of
8. As an
product claims
attempt to broaden
[T]he
compact, uni-
having a
conductor
trical
еxclusively in
describing
product
fiber, wound
covering of asbestos
form
subject
its
or function
terms of
use
thereon, matted, compressed and
spirally
attempt
to de-
is the
same vice as
substantially as described.
waterproofed,
patentable
device machine
scribe
manufacture, an elec-
9.
an article
As
terms of
function.
thin, compact,
having a
conductor
trical
98, USPQ
at
F.2d at
Id. 93
asbestos
fiber
covering of
uniform
only
it was
court observed
by adhesive
thereon and attached
wound
that a carbon
process was used
stated
substance,
being matted
the fibers
was
having the claimed function
fabric, sub-
compressed into
coherent
obtained,
never
and held that
can
stantially as described.
of its
solely
terms
function.
be described
court was
123. The Downes
150 F. at
Corp.,
Id.
Maid
Dress
Buono Yankee
prod-
process and
(2d Cir.1935)
that “the
of the view
274, USPQ
or dis-
substantially
invention
one
pro- uct are
type
of stitch
product was
claimed
art,
prior
machine,
having examined
covery,”
sewing
but
duced
the disclosed
found
which it
product produced
“the claims cover[ed]
(1)
patentee
that a
who does not
coating
the rule
following steps:
included
distinguish
his
from what is old
gum;
adhesive
a suitable
the wire with
reference, express
except by
or construc-
an asbestos
(2) winding the wire with
tive,
process by
produced
which he
(3)
thread;
compressing or com-
yarn or
it,
monopoly
cannot secure a
wire;
covering about
pacting the
produced.
means
whatever
water-proof coat-
(4) applying a suitable
ing
Although
or shield.
at 252.
context,
expansive when read out of
found that what
124. The court
simply
the rule that an
court
stated
old
over
distinguished the invention
patented. This is
product can not be
not
(fifth) step of brush-
additional
was an
art
ruling that
all-purpose
“the
another
as to smooth out
ing
yarn so
the asbestos
claim”,
limits a
rea-
inequalities”. The Court
“lumps and
Indeed,
panel states.
as the Atlantic
step
only
new
fifth
was
that this
soned
product-by-
not a
Gypsum
claim in
feature,
defendant did
and since the
process claim.
simply
step, the defendant was
employ this
Parke,
Cyan
v. American
Davis & Co.
prior art.
practicing the
(6th
571, USPQ
Co.,
207 F.2d
amid
no
not hold that
court did
The Downes
Cir.1953)
provide
also does
the asserted
infringed when
product claim can ever
rule. The
support
panel’s
the Atlantic
made
a different
product is
identical
chemical, one constitu
claim was to a novel
specifi-
from that described
from
ent of which was obtained
mammali
did
The court
hold
cation.
liver tissue:
dif-
process was
different because
consisting
class
compound
1. A
*16
by the
ferent,
used
process
that
and
esters,
acid, its salts and its
organic
of an
This case
art.
was
defendant
by auto-
being
acid derived
said acid
or
the Painter
nothing to do with
has
being
liver tissue and
lysis of mammalian
type of
or
or Brown
Bridgeford
pantothenic acid....
free from
claim,
raised in
any of the issues
product
1, USPQ
n. 1. The
99
at 238
at 571 n.
Id.
cases.
those
so
required that the claim be
had
examiner
again
brushing step
involved
A
appli-
and the
during prosecution,
limited
Gypsum Co. Consolidat
States
United
the is-
court stated
acquiesced. The
cant
888,
Cos.,
F.2d
55
130
Metal
Expanded
ed
of
construction:
as one
claim
sue
denied,
Cir.1942),
(6th
317
cert.
USPQ 247
is whether the
controlling question
The
(1943),
L.Ed. 558
87
63 S.Ct.
U.S.
specification,
limited
claims are so
simply held the claim inval
where the court
and their
wrapper proceedings
file
“novelty”.
product
for want
id
they
not cover
language
do
that
own
was:
claim
product.
appellee’s
and ex-
of the slit
Metallic fabric
16.
The court held
USPQ at 239.
Id. at
and strand
having strands
type
panded
estopped
prosecution
during
actions
that
forming mesh
interconnecting bonds
the claim
interpreting
from
patentee
sharp
having relatively
openings
work
Id. at
liver tissue.
include non-mammalian
where strands
points
at
corners
Although the
573-74,
USPQ
240.
interconnected,
hav-
said fabric
bonds are
panel as
by the Atlantic
is treated
issue
throughout the
corners
ing
edges and
of a
interpretation
body brushed
expanded metal
entire
ato
resemblance
claim,
a
it
closer
bears
smooth.
equivalents.
of the doctrine
question
all-purpose
no
ruling created
Surely this
3, USPQ
n.
at 251
897 n.
F.2d at
states,
that
panel
rule,
novelty in a brushed
found no
The court
3.
Painter/Scripps
treating the
negate
product would
smooth
product where
smooth
per
product
to the
as a
of claim
form
the claim
art, and held
known in the
Indeed,
Painter-type issue does
The court
se.
lack of invention.
invalid
case.
appear in this
referred
defined
product
A claim for a
Prоd
v. Fiber
Co.
Leather
In Hide-Ite
prod
product, or
making the
Cir.1915),
process
the claim
(1st
Co.,
independent Federal Circuit history. prosecution in the estoppel of the formation fruits of panel, One Atlantic Although not cited is now same law that Circuit Federal v. International Inc. Pfizer, I mention validity, patentability, of USPQ applied to issues 180, 190 538 F.2d Corp., Rectifier consistency This new infringement. and Cir.1976), the court noted wherein (8th 273 stability of usefully contributed has that: the law. is a form claim” “product-by-process A compound that for a patent held has product
of
Federal Circuit
example, the
For
by refer-
other than
of
purpose
described
claims,
cannot be
construed
that
making it.
of
construed
validity,
ence
be
determining
must
determining
of
purpose
way for the
15 same
USPQ at 280 n.
15, 190
188 n.
Id. at
See,
Asso-
Gore &
e.g.,
infringement.
W.L.
Ralston Puri
Also
original).
in
(emphasis
1275,
Garlock, Inc.,
F.2d
842
ciates,
v.
Inc.
Inc.,
F.Supp.
Far-Mar-Co.,
na
v.Co.
(Fed.Cir.1988).
1277,
1279, USPQ2d
in
(D.Kan.1984),
aff'd
art
in the
product
If
identical
grds.,
part on other
in
part
rev’d&
product-by-process
anticipates (Fed.Cir.1985):
Bridgeford
infringe the
claim
Painter
product will
the identical
then
and to-
panel, holding that Brown
Tri-Wall Containers
The Atlantic
claim.
infringe,
day typified by Scripps, for most of these
may
de-
product
the identical
unpatentable
panel’s
relate to
The Atlantic
cases
known
from this law.
parts
wherein, most,
patent
products
precedent
relegation of CCPA
BASF,
See, e.g.,
examination, holding
prece-
this
novel.
Cochrane v.
that
office
cases,
in-
etc.9 The facts of rela-
validity
Goodyear
in
ignored
dent is to be
prod-
determinations,
tively
dramatic
cases relate to the class of
is a
few
fringement
Scripps.
in
uct-by-process
“nose of
claim at issue
reinstating the
retrogression,
Indeed,
opinion,
as well
criticized White
wax” of
commentators,
47, 51,
of some
one ob-
Dunbar,
7 S.Ct.
the view
119 U.S.
a collection
dicta lifted out
(1886).
serves
L.Ed. 803
context,
until a
structure
been
new
class of
The Painter
supports.
on the most tenuous
built
scope of an
enlarge the
arose not to
claim
all
are so flawed.
Not
commentators
invention,
allow its claim-
but to
applicant’s
A Practical
Product-by-Process Claims:
applicant’s in-
ing
with
commensurate
Off.
Perspective, 68 J.Pat. & Trademark
prod-
is a new
the invention
When
vention.
states,
lengthy
after
Soc’y at Mirabel
a new
uct,
patenting as
this form allows its
analysis, that:
and the
the CCPA
product. The law of
Claims,
precedent that binds
of the commentators
the conclusion
us,
uniformly held that
the class of
courts have
is that
“[t]he
Painter,
recognized
product produced
the claim-
only
that was
Brown,
Fess-
held to in-
Pilkington,
designated process
Bridgeford,
Containers,
mann,
supported by
the decisions
fringe” is not
and Tri-Wall
cases established
claim. These
cited.
invention the
this class of
that for
Perspectives,
In 2
Law
Patent
§ 2.6[10]
identifying
serve as a mechanism
terms
2-796.39,
Adel
(1992),
M.J.
at 2-796.38 —
comply with 35
order
man states:
held,
a mat-
courts
112. These
U.S.C. §
Theoretically,
patentability
interpretation,
of claim
ter of
law
discovery of
patents resides
requirements
must
products
meet
such
product rather than
attributes of
independent
patentability,
manufacture, although to
method of
Thus the
made.8
way
patentability of a
the extent
pat-
Circuit, applying the rule that
Federal
a nonob-
predicated on
product can be
infringement validity,
entability,
manufacture,
need
vious method
inter-
law of claim
governed by the same
*18
course, if the claim
case.
not
the
Of
the
Scripps that when
held in
pretation,
by the de-
products made
to
is limited
as a
patentability
requirements of
process,
fined
then
inde-
met,
are enforceable
claims
are
such
problems
solve
to
principally
claims serve
the
which
pendent
to
process abroad
use of the
such as
is made.
imported into
is then
product that
make a
However, if the in-
States.
the United
cited
the
cases
if not all
the
Most
is un-
product and
makes a
ventor
new
by the At-
quoted
who are
commentators
footprint for that
unique
define a
able to
the class of
not involve
panel do
lantic
instance,
opinion
Scripps
was before
when
have endorsed
and this court
While the CCPA
suggest-
court,
rehearing
hearing
and
patent examiners view
on
and
procedure whereby
secondarily,
process,
banc;
broadly during
rehearing
the examination
and
en
claims
ed
improv-
court,
mechanism
is an administrative
opinion
this
ing
before
the Atlantic
by the
is established
The law
rehearings
examination.
en banc.
requested
hearing and the
and the courts.
statute
add sunshine
public debate
This
to resolve
"percolations”, but failure
court’s
argue
place in which to
dissent is not the
9. This
stability
the law.
to
not add
debate does
result
these cases controlled
whether
was,
first
place
Scripps. The correct
stabilize, not destabi-
formed to
utility for
court was
does discover
product, but
lize,
law.11
pat-
support the
would
product that
its
product whatever
entability
exception, not
courts are
“En
banc
manufacture, then to
method of
v. American-
further
patents
the rule.” United States
policy
granting
Corp., 363 U.S.
Steamship
Foreign
products such
nonobvious
new and
1336, 1339,
to
(Emphasis are illus- claim that All of the forms LOURIE, dissenting from Judge, Circuit It purpose. is serve a in the cases trated banc, rehearing in with denial of the court’s to of one form apply the law incorrect NEWMAN, Circuit whom RICH of the other. Just the factual situation join. Judges, placed it in the factual situation decision not to from the court’s I dissent Painter, Bridgeford, the context of do so for two case in banc. I hear this Container, other Brown, Tri-Wall First, contrary to our case it is reasons. specific type of this governing precedent panel to act con- procedures for a law and in Atlantic situation so factual court. prior precedent of this trary ato patentee is it in the class where places Howard Corp. v. Fort Kimberly Clark is that estopped to state 863, USPQ Co., Paper process. independent of the claimed thought (Fed.Cir.1985). panel If this (and I do wrongly decided Scripps was technological innova- experience to follow our not), either bound it was in- tion, today’s dramatic discoveries review. precedents or to seek an in banc the con- products, show volving biological neither, lapse seeking to It did excuse claim. class of of the Painter tinuing role merely of footnote means court, panel for a of this inappropriate It is wrongly why Scripps reason states a innersole, decide a shoe on the basis product-by- respect with decided unobvi- of a novel and discoverer that the over- doesn’t process issue. That reason product whose structure biological ous precedent. ride our that known can objectively court now per broadly se. Should holds Second, panel inven- patent protection for “process wish to restrict terms products determining biological complex limitations tions of serve that, irrespective they by how necessarily infringement.” identified believe contrary all conclusion banc that this made, be done en so of the fact it should precedent Scripps, such inventions to our with are concerned who so written need not have applied. Our should not that will be will know law *19 quotations between the two appears 10. This text jurisdic- geographic panel presents nationwide the Atlantic As a court of from Adelman tion, hope and contrary purpose. and chartered with created uniformity be stability would intent that stated: Corp. the Federal Circuit 11. In South its substan- fields of law in all within achieved judges court to every panel of of this For begin by adopting a basic as jurisdiction, we tive presented every be issue would anew examine jurisprudence two nation- foundation counterbalancing advan- practice devoid only predeces- as our courts which served al sоrs, begin on a tage. therefore We ... choose ad- outstanding contributors but base, clearly identifiable readily available justice.... ministration ca- maintaining same time a controlled at the 1370-71, USPQ at 658. 690 F.2d at compelled. change change pacity when its issue broadly it could have decided simply.
more CO., ATLANTIC THERMOPLASTICS INC., James B. Sullivan and Richard case itself character- patentee Fox, Plaintiffs-Appellants, B. being 24 as limited to the ized claim innersole was process by which the claimed v. he or made. An inventor determines what CORPORATION, FAYTEX regards his or her invention. 35 she Defendant/Cross- panel de- why 112. does the U.S.C. So § Appellant. analysis of all the pages pages vote 91-1076, Nos. 91-1095. up unnecessary old cases to end with an his claim was rule? If the inventor said Appeals, United States Court of and if the accused limited to the Federal Circuit. infringer process, then the didn’t use Sept. task is to decide issue is decided. Our us, that come before not to actual cases aren’t us.
broadly issues that before settle product- instances where the
Most of the up days are by-process comes these issue Pirozzolo, Willcox, Jack Pirozzolo R. & cases, there complex chemical Boston, Mass., McCarthy, argued plain- been) way (or may no other have him tiffs-appellants. With on the brief was why setting product. So are we define a Richard L. Binder. mostly af- out a broad rule law based Loud, Lorusso, Anthony M. Lorusso & fecting complex chemical when the cases Mass., Boston, argued for defendant/eross- inner- before us involves an fact situation appellant. him on the With brief neither parties sole and the have briefed M. Of counsel were John Thomas Sanders. argued applies as it to other nor issue Sheehan, Bomster, Alder, Inc., F. Pollock & make law than innersoles? Hard cases bad Loud, Providence, George R.I. and A. cases not limited to their own and so do Arlington, Va. redecided facts. should not be
here. to correct a seri- the court fails believe RADER, concurring in Judge, Circuit votes not to hear this
ous error when it rehearing in banc. denial of limiting to purpose for the case in banc poll judge requested a on wheth Twice a holding concerning infringe- facts the ruling in At er to reconsider in banc of claim 24. ment Co., Faytex Thermoplastics Inc. lantic (Fed. 834, USPQ2d
Corp., 970 F.2d Cir.1992). the court majority Twice rehearing.1 approve Twice refused to arguments detailed entire court considered reconsidering court’s deci favor to disturb court declined sion. Twice the ruling. Thermoplastics the Atlantic rehearing: governs in banc Fed.Cir.R. rehearing is not fa- hearing or Such ordinarily not be ordered will vored and full (1) except when consideration *20 dissents vote, the several this concurrence conducted before release 1. On the first grant ten active when it declined opinion, seven of this court’s before the court events, rehearing. On the judges to vote for ac- rehearing. refused vote, an eleventh Since these release, six refused conducted after second judge joined court. tive rehearing suggestion. points raised