dissenting from the denial of rehearing in banc.
I join the Chief Judge’s request for and the opinions of Judges Lourie and Newman in support of in banc rehearing. The panel opinion herein was not handed down without objection. I was one of the objectors for three principal reasons. The panel has misapprehended its function as an arm of this court. It has violated a rule of this court which has existed since its creation. It has misconstrued the early Supreme Court opinions on which it relies to justify violation of the rule.
I wish to point out to the other members of this court and to the bar, if need be, just what the Atlantic panel, as Judge Newman calls it, has done. This is no casual slip in an opinion. The panel has gone on an unnecessary excursion beyond the needs of this case, to review, as it sees it, the entire field of product-by-process claims and lay down a universal rule applicable to all such claims in these words:
Thus [summarizing its view of case law], in both patentability actions before the CCPA and infringement actions before the Supreme Court or the regional circuits, the courts regarded the process language in product-by-process claims as limiting the claim. [970 F.2d 834, 845.]
In light of Supreme Court caselaw and the history of product-by-process claims, this court acknowledges that infringement analysis proceeds with reference to the patent claims. Thus, process terms in product-by-process claims serve as limitations in determining infringement. [970 F.2d at 846.]
No exceptions.
As Judge Lourie has succinctly pointed out, this whole excursion was unnecessary because the patentee admitted that claim 24, the product-by-process claim, was limited to the process. The claim read: “The molded innersole produced by the method of claim 1.” There was, therefore, no occasion to review the law to determine how the claim should be construed. It was not an issue in the case. Nevertheless, for unexplained reasons, the panel devoted over 60% of its opinion (19 of 31 pages) to undertake a restatement of the law instead of simply deciding the case, which is its proper function. We are not here to provide restatements of the law. Such restatements should not be made without an opportunity for all affected parties to be heard from. The affected parties here are not the vendors of inner soles but largely the entire chemical industry, particularly the pharmaceutical manufacturers.
Judge Newman’s opinion refers to the cost of producing a new drug. To this I would add a recent statement by Roger A. Brooks, an Assistant Vice President of the Pharmaceutical Manufacturers Association (PMA) made at the May 14, 1992, meeting of AIPLA (Bulletin, April-June 1992 p. 475). After pointing out that the more than 100 research-based members of PMA are highly dependent on intellectual property protection to provide the incentive to invest risk capital, Mr. Brooks said:
In the pharmaceutical industry, innovation comes at a premium cost. And R & D productivity is measured generally in terms of an individual’s or nation’s ability to develop what we call new chemical entities, or NCEs.
*1281The cost of developing an NCE continues to rise each year. For example in 1976, the cost of moving an NCE from laboratory to market was $54 million. By 1990, this figure has risen nearly fivefold to over $230 million per NCE.
He then pointed out that “only one out of 5,000 or 10,000 compounds discovered ever make it to the market.” This kind of innovative R & D is not going to be encouraged by the rule just laid down by the Atlantic panel.
The most egregious act of the Atlantic panel, however, is its defiant disregard, for the first time in this court’s nearly ten-year history, of its rule that no precedent can be disregarded or overruled save by an in banc court, on the stated but feeble ground that the authors of the precedential opinion “ruled without reference to the Supreme Court’s previous cases involving product claims with process limitations.” The Atlantic panel continued:
A decision that fails to consider Supreme Court precedent does not control if the court [i.e. the Atlantic panel] determines that the prior panel [in the Scripps case] would have reached a different conclusion if it had considered controlling precedent.
This is not only insulting to the Scripps panel (Chief Judge Markey, Judge Newman and a visiting judge), it is mutiny. It is heresy. It is illegal.
It is interesting, indeed, to observe that three of the four judges currently dissenting from the failure to in banc this case are those who have spent their entire professional careers in the law procuring and litigating patents — and defending against them. Two of these judges had earlier careers as research chemists. Their patent work involved, beyond anything else, the writing, interpreting, and arguing about claims, around which the whole law of infringement revolves. It is more than a little bit possible that we have considered the Supreme Court cases on which the Atlantic panel relies, and more than once, which accounts for the fact that we do not agree with the Atlantic panel’s interpretation of them. The extensive efforts of Judge Newman to explain what they are all about speak for all of us and I need not say more.
In concluding, I quote from the BNA PTC Journal report on this case their editorial comment (Vol. 44, p. 286):
PTCJ COMMENT: One might fairly inquire about the vitality of the Federal Circuit’s “prior panel rule” in light of this ruling. The rationale in footnote 2 for not following Scripps cited another footnote from an Eleventh Circuit juvenile incarceration case (see Tucker v. Phyfer, 819 F.2d 1030, 1037, n. 7 (CA 11 1987) which in turn cited no authority. The precedential status of the Scripps ruling appears to have been clouded, but future panels may still be entitled to cite it since it is not expressly repudiated here. While the correction in this case involved overlooked Supreme Court precedent, the logic would seem to permit the invocation of other CCPA and CAFC precedent as well.
Res ipsa loquitur.
Fortunately, this court has another rule — as yet to be ignored by a panel, I believe — that where there are conflicting precedents, the earlier precedent controls. But the conflict should have been eliminated in banc to avoid confusion in the law.