## United States Court of Appeals for the Federal Circuit

2004-1522

SMITHKLINE BEECHAM CORPORATION and SMITHKLINE BEECHAM, P.L.C.,

Plaintiffs/Counterclaim DefendantsAppellants,

and

GLAXOSMITHKLINE, P.L.C.,

Plaintiff/Counterclaim Defendant,

and

BEECHAM GROUP, P.L.C.,

Plaintiff,

v.
APOTEX CORPORATION, APOTEX, INC., and TORPHARM, INC.,

Defendants/Counterclaimants- Appellees.

Ford F. Farabow, Jr. , Finnegan, Henderson, Farabow , Garrett & Dunner, L.L.P., of Washington, DC, filed a petition for re hearing en banc for plai ntiffs/counterclaim defendants-appellants. With him on the petition were Howard W. Levine
, Sanya Sukduang , and Jennifer S. Swan

. Hugh L. Moore , Lord, Bissell & Brook LLP, of Chicago, Illinois, filed a response to the petition for defendants/counter claimants-appellees. With him on the response were Keith D. Parr
, Scott B. Feder
, Hugh S. Balsam , and Kevin M. Nelson

. Appealed from: United States District Cour t for the Eastern District of Pennsylvania
Judge R. Barclay Surrick

## United States Court of Appeals for the Federal Circuit

2004-1522

SMITHKLINE BEECHAM CORPORATION and SMITHKLINE BEECHAM, P.L.C.,

Plaintiffs/Counterclaim DefendantsAppellants,

and

GLAXOSMITHKLINE, P.L.C.,

Plaintiff/Counterclaim Defendant,

and

BEECHAM GROUP, P.L.C.,

Plaintiff,

v.
APOTEX CORPORATION, APOTEX, INC., and TORPHARM, INC.,

Defendants/CounterclaimantsAppellees.

ON PETITION FOR REHEARING EN BANC

Before MICHEL, Chief Judge , NEWMAN, MAYER, RADER, SCHALL, BRYSON, GAJARSA, LINN, DYK, and PROST, Circuit Judges

.
O R D E R
A petition for rehearing en banc was fil ed by the Appellants, and a response
thereto was invited by the c ourt and filed by the Appellees. The matter was referred first
as petition for panel rehearing to the panel that heard the appeal, and thereafter the
petition for rehearing en banc and response were referred to the circuit judges who areauthorized to request a po ll whether to rehear t he appeal en banc. A poll was
requested, taken, and failed.
Upon cons ideration thereof,

IT IS ORDERED THAT:
(1) The petition fo r rehearing is denied.
(2) The petition for re hearing en banc is denied.
(3) The mandate of the c ourt will issue on June 29, 2006.

NEWMAN, Circuit Ju dge , dissents in a s eparate opin ion, in which GAJARSA,

Circuit Jud g e , joins.

RADER, Circuit Judge , dissents in a s e parate opinion, in which GAJARSA,

Circuit Jud g e , joins.

LOURIE, Circuit Judge , did not participate in the vote.

F O R T H E C O U R T

__ Jun 22 2006

_ _ s/Jan Horbaly

__ Date Jan Horbaly C l e r k

cc: Ford F. Farabow, Jr., Esq. Hugh L. Moore, Esq.

2004-1522 2

## United States Court of Appeals for the Federal Circuit

04-1522

SMITHKLINE BEECHAM CORPORATION, SMITHKLINE BEECHAM, P.L.C.,
Plaintiffs/Counterclaim Defendants-Appellants,

and

GLAXOSMITHKLINE, P.L.C.,

Plaintiff/Counterclaim Defendant,

and

BEECHAM GROUP, P.L.C.,

Plaintiff,

v.
APOTEX CORPORATION, APOTEX INC., AND TORPHARM, INC.,
Defendants/Counterclaimants-Appellees.

NEWMAN, Circuit Judge , with whom GAJARSA, Circuit Judge , joins, dissenting from denial of the suggestion for rehearing en banc

.

Although I believe that the opinions of this court on product-by-process claims, viz.
, Scripps Clinic & Research Found. v. Genentech, Inc. , 927 F.2d 1565 (Fed. Cir. 1991) and
Atlantic Thermoplastics Co. v. Faytex Corp. , 970 F.2d 834 (Fed. Cir. 1992), do not conflict
when viewed in the contexts in which they ar ose and to which they apply, there has been
enough misperception and casual misstatement among users of t he patent system, to04-1522 2 warrant our resolution of the debat e. This case is an ideal vehicle for such remedy, for
misstatement concerning these cases misled the district court, and indeed has, in my view,
misled the majority of this panel. As I wrote in my dissent from the panel decision, Scripps

accommodates the situation where the product is novel and complex and cannot be
described other than by the way it was made, while Atlantic Thermoplastics deals with a
product whose production requires use of a cert ain process, whether or not the product

itself is novel.
In view of the apparent uncertainty within t he patent community as to the distinction

between such situations, it is ti me for this court to interpret the law with one voice. From
the court's decision not to respond to this need, I respectfully dissent.

## United States Court of Appeals for the Federal Circuit

04-1522

SMITHKLINE BEECHAM CORPORATION, SMITHKLINE BEECHAM, P.L.C.,
Plaintiffs/Counterclaim Defendants-Appellants,

and

GLAXOSMITHKLINE, P.L.C.,

Plaintiff/Counterclaim Defendant,

and

BEECHAM GROUP, P.L.C.,

Plaintiff,

v.
APOTEX CORPORATION, APOTEX INC., AND TORPHARM, INC.,

Defendants/Count erclaimants-Appellees.

RADER, Circuit Judge , dissenting from denial of the suggestion for rehearing en banc
, in which GAJARSA, Circuit Judge , joins.

The role of the claims in an infringement or ant icipation analysis is at the heart of
patent law. Whether all the words in a product-by-process claim are limiting is a
question that patent attorneys, trial cour ts, and apparently this court, still cannot
confidently answer. This court’s decision in Smithkline Beecham Corp . v. Apotex Corp.
, 439 F.3d 1312 (Fed. Cir. 2006) expands on the existing c onfusion by suggesting that
the specific language of the claims is not relevant to ant icipation. 439 F.3d at 1317.
That additional confusion does a disservice to this court’s jurisprudence.Without doubt, this court’s product-by-pro cess law cont ains an apparent conflict.

Choos ing between Scripps Clinic & Research Foundation Genentech, Inc. , 927 F.2d
1565 (Fed. Cir. 1991) and Atlantic Thermoplastics Co. v. Faytex Corp. , 970 F.2d 834
(Fed. Cir. 1992) is not task this court through it s inaction should c o ntinue to force on trial

courts, as it did in Smithklin e . Gi ving those same trial cour ts the option of ignoring the
claim language altogether is simply in exc u sable. Besides, this court’s Smithklin e
opinion begs the question: how can a tria l court det ermine wh ether a patentee has
claimed an old product without first construi ng the sc ope of what has been claime d?
Without a satisfying answer to that question, I respectfully diss ent from the denial to

rehear Smithkline en banc

.

04-1522 2