This morning the Federal Circuit issued one precedential order denying en banc rehearing in a patent case, as well as one nonprecedential opinion in another patent case. Both included dissents. Here is the text of the order and the introduction to the opinion along with language from the dissents.
HZNP Finance Limited v. Actavis Laboratories UT, Inc. (Precedential Order)
A petition for rehearing en banc was filed by appellants HZNP Finance Limited and Horizon Therapeutics USA, Inc. A response to the petition was invited by the court and filed by cross-appellant Actavis Laboratories UT, Inc. The petition for rehearing was first referred to the panel that heard the appeal, and thereafter, the petition for rehearing en banc and the response were referred to the circuit judges who are in regular active service. A poll was requested, taken, and failed.
Upon consideration thereof,
IT IS ORDERED THAT:
1) The petition for panel rehearing is denied.
2) The petition for rehearing en banc is denied.
3) The mandate of the court will issue on March 3, 2020.
LOURIE, Circuit Judge, with whom NEWMAN, O’MALLEY, and STOLL, Circuit Judges, join, dissenting from the denial of the petition for rehearing en banc.
I respectfully dissent from the court’s decision not to rehear this case en banc. I believe the panel majority, affirming the district court, has erroneously misconstrued the “consisting essentially of” language in evaluating the definiteness requirement of 35 U.S.C. § 112.
The petition for rehearing asserts that the panel erred in holding that the claims reciting “consisting essentially of” are indefinite because the basic and novel properties that the specification indicates the claimed composition possess are indefinite. I agree with the petition.
Collabo Innovations, Inc. v. Sony Corp. (Nonprecedential Opinion)
Collabo Innovations, Inc. (“Collabo”) appeals from the final written decisions of the Patent Trial and Appeal Board (“Board”) in two inter partes reviews, each finding claims 1–18 of U.S. Pat. No. 7,023,034 (“the ’034 patent”) unpatentable. Because we agree with the Board that Collabo did not present a timely claim construction argument, and because substantial evidence supports the Board’s findings regarding the prior art, we affirm.
CLEVENGER, Circuit Judge, dissenting-in-part.
I join Parts I and II.A of the majority’s opinion, but I respectfully dissent from Part II.B. The majority concludes, as did the Board, that JPA Publication No. H11- 87674 (“Abe”) discloses a “reflecting wall” having a vertical cross section that “is a trapezoid whose upper base is longer than a lower base.” According to the majority, the Board’s finding that Abe satisfies this additional limitation of dependent claims 3 and 12 of U.S. Patent No. 7,023,034 (the “’034 patent”) was supported by substantial evidence because, when drawn together, light shielding film 9 and a portion of the insulating film 14 form a trapezoid whose upper base is longer than a lower base. But by blessing the Board’s analysis, the majority commits the same error. The question is not whether two structures (or portions thereof) form a trapezoid when combined, or even whether Fig. 3 of Abe, on its face, discloses a “trapezoidal shape.” The appropriate inquiry is whether substantial evidence supports the Board’s finding that Abe actually discloses combining multiple, separately-designated, structures such that their combination forms a trapezoidal “reflecting wall”—a structure having approximately vertical surfaces that reflects light? Because Abe does not disclose a trapezoidal “reflecting wall,” I respectfully dissent-in-part.