By Jason Rantanen
Cancer Research Technology Ltd. v. Barr Laboratories, Inc. (Fed. Cir. 2011) (Precedential Order) Download 10-1204 enbanc order
This morning the CAFC denied Barr Laboratories' request for rehearing en banc. Review was barely denied: the judges split 5-5, just short of the 6-judge majority currently required for rehearing en banc. Dissenting from the denial, both Judges Prost and Dyk expressed opinions on the issue of prosecution laches.
I previously wrote about Cancer Research Technology here. In a nutshell, the panel majority reversed the district court's finding of prosecution laches on the ground that no prejudice was shown due to the lack of any evidence of intervening rights arising during the prosecution period. Judge Prost dissented from that ruling, rejecting the idea that prosecution laches requires either prejudice or intervening rights.
Judge Prost's dissent from the denial of rehearing en banc, joined by Judges Gajarsa, Moore, and O'Malley, reiterates and bolsters that view. Drawing on Supreme Court precedent, Judge Prost again argues that the Supreme Court's test for prosecution laches does not require evidence of intervening rights:
This narrowing of the doctrine is not only unnecessary, it is contrary to Supreme Court precedent. It is true 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.
Prost dissent at 3-4. In Judge Prost's view, this precedent instead requires the court to favor flexibility over rigidity as the Supreme Court instructed in decisions such as Bilski, KSR, and eBay.
Judge Dyk wrote separately, commenting that while he agrees with Judge Prost that evidence of intervening rights should not be required, he disagrees with the use of a "totality of the circumstances" test, "which is really no test at all." Dyk dissent at 1.
Is Woodridge Applicable? In his IP newsletter, Hal Wegner takes issue with Judge Prost's characterization of a Supreme Court "doctrine" of prosecution laches based on Woodridge, pointing out that the case had nothing to do with a granted patent. As explained in an amicus brief filed in Symbol Technologies:
Woodbridge v. United States, 263 U.S. 50 (1923), does not provide any guidance regarding prosecution laches because Woodbridge never received a patent. Rather, the Woodbridge case involved a statutory compensation act for private relief for an unpatented invention of Woodbridge. Woodbridge, 263 U.S. at 51. The statute's language required the trial court to deny relief to Woodbridge because there had been laches in his patent procurement process. Id. This statutory laches in a private law therefore had nothing to do with laches in the patent law.
In contrast, Webster Elec. Co. v. Splitdorf Elec. Co., 264 U.S. 463 (1924), did include a discussion of prosecution laches. An examination of the facts in that case, however, reveals that the key issue involved what today would be inequitable conduct. Accordingly, Webster hardly shapes the contours for a well-formed ‘doctrine.’”
Hal Wegner, quoting Symbol Technologies, Inc. v. Lemelson Medical, Educ. & Research Foundation, 422 F.3d 1378 (Fed. Cir. 2005), Brief Amicus Curiae of Takeda Pharmaceutical Co., 2004 Westlaw 3335267, p. 4 (2004)(original emphasis).