United States Court of Appeals
for the Federal Circuit
__________________________
CANCER RESEARCH TECHNOLOGY LIMITED
AND SCHERING CORPORATION,
Plaintiffs-Appellants,
v.
BARR LABORATORIES, INC. AND
BARR PHARMACEUTICALS, INC.,
Defendants-Appellees.
__________________________
2010-1204
__________________________
Appeal from the United States District Court for the
District of Delaware in case no. 07-CV-0457, Judge Sue L.
Robinson.
ON PETITION FOR REHEARING EN BANC
__________________________
Before RADER, Chief Judge, NEWMAN, LOURIE, BRYSON,
GAJARSA, LINN, DYK, PROST, MOORE, and O’MALLEY,
Circuit Judges.
PER CURIAM.
PROST, Circuit Judge, with whom GAJARSA, MOORE,
and O’MALLEY, Circuit Judges, join, dissents from the
denial of the petition for rehearing en banc.
CANCER RESEARCH v. BARR LABS 2
DYK, Circuit Judge, dissents from the denial of the pe-
tition for rehearing en banc.
__________________________
GEORGE C. LOMBARDI, Winston & Strawn LLP, of
Chicago, Illinois, filed a petition for rehearing en banc for
defendants-appellees. With him on the petition were
LYNN M. ULRICH, MAUREEN L. RURKA, IVAN M. POULLAOS,
JULIA M. JOHNSON, of Chicago, Illinois; and STEFFEN N.
JOHNSON, of Washington, DC.
MATTHEW D. POWERS, Weil Gotshal & Manges LLP, of
Redwood Shores, California. filed a response to the peti-
tion for plaintiffs-appellants. With him on the response
were JENNIFER H. WU, of New York, New York; and
NICOLAS G. BARZOUKAS, of Houston, Texas.
__________________________
ORDER
A petition for rehearing en banc was filed by Defen-
dants-Appellees, and a response thereto was invited by
the court and filed by Plaintiffs-Appellants. The petition
for rehearing was 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 authorized to request a poll whether to rehear the
appeal en banc. A poll was requested, taken, and failed.
Upon consideration thereof,
IT IS ORDERED THAT:
(1) The petition of Defendants-Appellees
for panel rehearing is denied.
(2) The petition of Defendants-Appellees
for rehearing en banc is denied.
3 CANCER RESEARCH v. BARR LABS
(3) The mandate of the court will issue on March
7, 2011.
FOR THE COURT
February 28, 2011 /s/ Jan Horbaly
Date Jan Horbaly
Clerk
cc: Matthew D. Powers, Esq.
George C. Lombardi, Esq.
United States Court of Appeals
for the Federal Circuit
__________________________
CANCER RESEARCH TECHNOLOGY LIMITED
AND SCHERING CORPORATION,
Plaintiffs-Appellants,
v.
BARR LABORATORIES, INC. AND
BARR PHARMACEUTICALS, INC.,
Defendants-Appellees.
__________________________
2010-1204
__________________________
Appeal from the United States District Court for the
District of Delaware in case no. 07-CV-0457.
PROST, Circuit Judge, with whom GAJARSA, MOORE,
and O’MALLEY, Circuit Judges, join, dissents from the
denial of the petition for rehearing en banc.
__________________________
I respectfully dissent from the court’s denial of the re-
quest to rehear this case en banc. The panel majority’s
decision improperly weakens the Supreme Court’s legal
test for prosecution laches by requiring evidence of inter-
vening rights. Consequently, it encourages applicants to
keep prosecution open and reshape their claims to capture
later technological and business developments, all to the
public’s injury.
CANCER RESEARCH v. BARR LABS 2
A brief review of this patent’s prosecution illustrates
why the Supreme Court and this court employ prosecu-
tion laches as a doctrine to guard against improper prose-
cution. The original application was filed in August 1982.
The examiner’s first office action was a rejection citing
concerns about utility. Rather than responding substan-
tively, the applicant filed a continuation and abandoned
the original application. The examiner again issued a
rejection. The applicant again filed a continuation and
again abandoned its pending application. This cycle of
reject-continue-abandon repeated nine more times. The
applicant extended the duration still further with ap-
proximately two years of strategic extensions.
By the time Cancer Research took over prosecution, it
had made significant progress in developing the drug
covered by this patent’s claims. Only then did Cancer
Research finally substantively respond to the utility
rejection by pointing to data in the original application.
Shortly thereafter—before a new examiner and over
eleven years after filing—this patent issued in 1993.
The majority did not dispute the district court’s find-
ing that that this was unreasonable prosecution practice.
But rather than affirm the well-reasoned opinion below,
the majority narrowed the equitable doctrine of prosecu-
tion laches by requiring direct evidence of intervening
rights, and thereby prevented the defendant from estab-
lishing the defense. As a matter of law and of policy, I
submit that the court has committed a serious wrong.
The doctrine of prosecution laches is addressed in sig-
nificant part to the harms improper prosecution imposes
on the public. Woodbridge v. United States, 263 U.S. 50,
60 (1923) (discussing Macbeth-Evans Glass Co. v. Gen.
Electric Co., 246 F. 695, 700 (6th Cir. 1917)); Symbol
3 CANCER RESEARCH v. BARR LABS
Techs., Inc. v. Lemelson Med., Educ. & Research Found.,
LP, 277 F.3d 1361, 1364 (Fed. Cir. 2002) (discussing
Crown Cork & Seal Co. v. Ferdinand Gutmann Co., 304
U.S. 149 (1938)). Where “the purpose and result of the
conduct of the inventor were unduly to postpone the time
when the public could enjoy the free use of the invention,”
equity bars the inventor from seeking to exclude the
public from the claimed subject matter. Woodbridge, 263
U.S. at 60; see also Webster Elec. Co. v. Splitdorf Elec. Co.,
264 U.S. 463, 465 (1924).
There is no dispute that prosecution laches is an equi-
table doctrine, nominally applied based on the totality of
the circumstances. See Cancer Research Tech. Ltd. v.
Barr Labs., Inc., 625 F.3d 724, 728 (Fed. Cir. Nov. 9,
2010). In my view, this test should remain intentionally
flexible in order to accommodate the different ways in
which the public might be harmed by a delay in the
patent monopoly, whether it be late entry of generic
pharmaceuticals, a lack of access to foundational tech-
nologies, distortion of markets, or other harms we have
not yet encountered. But the majority rejects the "totality
analysis." First, by requiring direct evidence of interven-
ing rights during the period of delay, the majority ignores
the harm suffered by the public when patents are not
prosecuted in a timely manner. Second, the court ignores
the extent of the harm visited on the accused infringer
and on the public during the period after issuance, when
their right to practice the invention is delayed. In my
view, such rigidity unnecessarily narrows the doctrine,
with the result that this court will be blinded to the larger
equities at stake. A rigid rule surely discounts the rele-
vant concerns that may arise.
This narrowing of the doctrine is not only unneces-
sary, it is contrary to Supreme Court precedent. It is true
CANCER RESEARCH v. BARR LABS 4
that in both Woodbridge and Webster the Court refused to
enforce the patent where both unreasonable delay and
intervening rights existed. Woodbridge, 263 U.S. at 53,
56-57; Webster, 264 U.S. at 465-66. In each of these cases,
however, the Court made clear that both unreasonable
delay and intervening rights were not required to support
a finding of prosecution laches. In Woodbridge, the Court
stated that an inventor “‘may forfeit his rights as an
inventor by a willful or negligent postponement of his
claims, or by an attempt to withhold the benefit of his
improvement from the public until a similar or the same
improvement should have been made and introduced by
others.’” Woodbridge, 263 U.S. at 57 (quoting Kendall v.
Winsor, 62 U.S. (21 How.) 322, 329 (1858)). Similarly, in
Webster, the Court stated, “[o]ur conclusion, therefore, is
that in cases involving laches, equitable estoppel or
intervening private or public rights, the two-year time
limit prima facie applies to divisional applications and
can only be avoided by proof of special circumstances
justifying a longer delay.” Webster, 264 U.S. at 471. The
Court’s use of the disjunctive “or” in these cases distin-
guishes prosecution laches and intervening rights as
independent defenses. 1
1 Neither Crown Cork & Seal, 304 U.S. 159, nor
General Talking Pictures Corp. v. Western Electric Co.,
304 U.S. 175 (1938), altered this conclusion. In Crown
Cork & Seal, the Supreme Court explained that Webster
did not establish “two years” as a strict time limit for
filing a divisional application after the issuance of the
patent. 304 U.S. at 167–68. General Talking Pictures
applies Crown Cork & Seal’s rule to continuation applica-
tions. 304 U.S. at 183. Nothing in General Talking
Pictures requires the party asserting prosecution laches to
show that it had intervening rights or was prejudiced as a
prerequisite to asserting the defense. The existence of
intervening adverse rights is merely one factor courts
5 CANCER RESEARCH v. BARR LABS
The rigidity of the majority’s rule is of particular con-
cern because the Supreme Court has repeatedly—and
recently—cautioned against such excessive formalism in
application of the patent laws. In Bilski v. Kappos, No.
08-964, slip op. at 6–7, 561 U.S. ___ (June 28, 2010), the
Court cautioned that exclusive use of the “machine-or-
transformation test” to determine a process’s patentabil-
ity was too restrictive, and risked reading into the Patent
Act limitations on subject matter patentability that
Congress did not intend. In KSR International Co. v.
Teleflex Inc., 550 U.S. 398, 419–22 (2007), the Court held
that rigid insistence that a patent could be proved obvious
only by locating in the prior art some explicit “teaching,
suggestion, or motivation” to combine references was too
narrow a view of the statute against obvious patents.
And in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388,
393–94 (2006), the Court rejected any firm rule that a
judgment of infringement should normally be followed by
a permanent injunction.
In each of these cases, flexibility was favored over ri-
gidity. The majority’s opinion moves in the opposite
direction. Under its rule, the “totality of the circum-
stances” test has been muted into an inquiry into specific
forms of proof. In my view, such an outcome is undesir-
able and inconsistent with the controlling authority, as
explained at length in my dissenting opinion to the
panel’s decision. En banc review could have prevented
the harm done by the majority to this equitable doctrine.
Accordingly, I respectfully dissent from the court’s denial
of Barr Laboratories’ request for rehearing en banc.
consider when weighing the equities and deciding
whether the equitable defense applies.
United States Court of Appeals
for the Federal Circuit
__________________________
CANCER RESEARCH TECHNOLOGY LIMITED
AND SCHERING CORPORATION,
Plaintiffs-Appellants,
v.
BARR LABORATORIES, INC. AND
BARR PHARMACEUTICALS, INC.,
Defendants-Appellees.
__________________________
2010-1204
__________________________
Appeal from the United States District Court for the
District of Delaware in case no. 07-CV-0457, Judge Sue L.
Robinson.
DYK, Circuit Judge, dissenting from the denial of the
petition for rehearing en banc.
__________________________
Judge Prost has ably stated why a defendant need not
show evidence of intervening rights to establish a prose-
cution laches defense and why this case should have been
heard en banc, and I join her opinion in these respects.
However, I cannot agree that the test in this context
should be the amorphous “totality of the circumstances”
test, which is really no test at all. The Supreme Court
has not required us to utilize this confusing test for prose-
CANCER RESEARCH v. BARR LABS 2
cution laches, and I believe that we should decline to do
so. Patent prosecutors require guidance as to when they
risk a defense of prosecution laches. We should grant en
banc review to provide that guidance.