In Abbott Laboratories v. Sandoz Inc., __ F.3d __ (Fed. Cir. 2009)(Rader, J.)(en banc in part), the court overruled prior precedent dealing with product-by-process claiming.

Did the Majority Create a Brand New Procedural Vehicle?

Lost in the shuffle is the important procedural question raised in the longer dissenting opinion: Did the majority violate proper procedures by its partial en banc imprimatur to overruling Scripps Clinic? Three members of the court suggest this is the case. Three members of the court suggest this is the case. Abbott, __ F.3d at __ (Newman, J., dissenting, joined by Mayer, Lourie, JJ.).

Indeed, Professor Crouch has dubbed Abbott v. Sandoz as a decision modifying precedent “en banc sua sponte [in part] sub secretum”. Dennis Crouch, En Banc Federal Circuit: Infringement of Product-by-Process Claim Requires Practicing the Process, Patently O, May 18, 2009.

But, no new procedural ground was in fact broken in this case; rather, the procedure follows Kingsdown Medical Consultants, Ltd. v. Hollister Inc., 863 F.2d 867 (Fed. Cir. 1988)(Markey, C.J.)(en banc in part); Midwest Industries, Inc. v. Karavan Trailers, Inc., 175 F.3d 1356 (Fed.Cir.1999)(Bryson, J.)(en banc in part); and DSU Medical Corp. v. JMS Co., Ltd., 471 F.3d 1293 (Fed. Cir. 2006)(Rader, J.)(en banc in part).

In Kingsdown, the two senior members of the dissenting opinion in Abbott joined the majority (the junior member had not yet joined the court). Kingsdown, 863 F.2 at 876 n.16. In both Midwest Industries and DSU Medical, all three members of the dissenting opinion in Abbott joined the majority. DSU Medical, 471 F.3d at 1304; Midwest Industries, 175 F.3d at 1359 n.*