United States Court of Appeals for the Federal Circuit 

2008-1248 

ARIAD PHARMACEUTICALS, INC., 

MASSACHUSETTS INSTITUTE OF TECHNOLOGY, 

THE WHITEHEAD INSTITUTE FOR BIOMEDICAL RESEARCH, 

and THE PRESIDENT AND FELLOWS OF HARVARD COLLEGE, 

 Plaintiffs-Appellees, 

v. 

ELI LILLY AND COMPANY, 

 Defendant-Appellant. 

Appeal from the United States District Court for the District of Massachusetts in case 

No. 02-CV-11280, Judge Rya W. Zobel. 

Before MICHEL, Chief Judge, NEWMAN, MAYER, LOURIE, RADER, SCHALL, 

BRYSON, GAJARSA, LINN, DYK, PROST, and MOORE, Circuit Judges. 

PER CURIAM. 

O R D E R

Plaintiffs-Appellees ARIAD Pharmaceuticals, Inc., et al. filed a petition for 

rehearing en banc. The petition for rehearing en banc was presumed to request relief 

that can be granted by the panel that heard the appeal, and action on the petition for 

rehearing en banc was deferred until the panel had an opportunity to grant the relief 

requested. The panel requested a response from Defendant-Appellant Eli Lilly and 

Company, who filed a response. The court granted Novozymes A/S’s motion for leave 

to file a brief as amicus curiae. 
 The petition for rehearing was considered by the panel that heard the appeal, 

and thereafter the petition for rehearing en banc, the response, and the amicus curiae 

brief were referred to the circuit judges who are authorized to request a poll on whether 

to rehear the appeal en banc. A poll was requested and taken, and the court has 

decided that the appeal warrants en banc consideration. 

 Upon consideration thereof, 

 IT IS ORDERED THAT: 

(1) The petition of Plaintiffs-Appellees for rehearing en banc is granted. 

(2) The court’s April 3, 2009, opinion is vacated, and the appeal is reinstated. 

(3) The parties are requested to file new briefs addressing the issues raised in 

the petition: 

a. Whether 35 U.S.C. § 112, paragraph 1, contains a written description 

requirement separate from an enablement requirement? 

b. If a separate written description requirement is set forth in the statute, 

what is the scope and purpose of the requirement? 

 This appeal will be heard en banc on the basis of the originally filed briefs, 

additional briefing ordered herein addressing the issues set forth above, and oral 

argument. An original and thirty copies of all briefs shall be filed, and two copies served 

on opposing counsel. The Plaintiffs-Appellees shall file its brief within forty-five (45) 

days from the date of filing of this order. The Defendant-Appellant’s response is due 

within thirty (30) days from the date of service of the Plaintiffs-Appellees’ brief. The 

Plaintiffs-Appellees’ reply, if any, is due within fifteen (15) days from the date of service 

of the Defendant-Appellant’s response. Briefs shall adhere to the type-volume 

limitations set forth in Federal Rule of Appellate Procedure 32 and Federal Circuit 

Rule 32. 

2008-1248 - 2 - 
2008-1248 - 3 - 

 Briefs of amici curiae will be entertained, and any such amicus briefs may be filed 

without leave of court but otherwise must comply with Federal Rule of Appellate 

Procedure 29 and Federal Circuit Rule 29. The United States is invited to submit an 

amicus brief. 

Oral argument will be held at a time and date to be announced later. 

 FOR THE COURT 

 August 21, 2009 _ /s/ Jan Horbaly________

 Date Jan Horbaly 

 Clerk 

cc: John M. Whealan, Esq. 

Charles E. Lipsey, Esq. 

 Kenneth J. Burchfiel, Esq.