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HZNP Finance Ltd. v. Actavis Laboratories UT, Inc.

No En Banc Review of Opinion Finding “Consisting Essentially Of” Indefinite Based on Written Description

HZNP Finance Ltd. v. Actavis Laboratories UT, Inc., __ F.3d __, 2020 WL ____ (Fed. Cir. Feb. 25, 2020) (Per curiam; dissenting opinion by Lourie (Newman, O’Malley, Stoll, joining)) (D.N.J: Hillman) (3 of 5 stars)

Fed Cir denies petitions for panel rehearing and rehearing en banc. The mandate based on the panel opinion (940 F.3d 680 (Fed. Cir. 2019) (Prost, Newman (dissenting), REYNA)) will issue on March 3.

Dissent: Judge Lourie would have reheard the appeal en banc. In his view the panel erred by finding the claims indefinite, and the disputed language, “‘consisting essentially of,’ is clear, definite language indicating that the constituents of a claim cannot include materials that affect the basic and novel properties of the claimed composition.” Op. at 4. The panel had found the claims indefinite because of conflicting statements about what those novel properties actually were. Judge Lourie reasons that while the specification’s teachings about the inventions advantages are important, those advantages are not part of the claims, and so questions about the scope of disclosed advantages are not part of a definiteness analysis.

KEYWORDS: EN BANC; DEFINITENESS; CLAIM CONSTRUCTION