Digest of Bristol-Myers Squibb Co. v. Teva Pharms. USA, Inc., No. 2013-1306 (Fed. Cir. Oct. 20, 2014) (precedential). On appeal from D. Del. Before Prost, Newman, Plager, Lourie, Dyk, Moore, O’Malley, Reyna, Wallach, Taranto, Chen, and Hughes (per curiam).

Procedural Posture: Plaintiff-appellant Bristol-Myers Squibb Company (“BMS”) filed a combined petition for panel rehearing and rehearing en banc. The petition was denied.

Dyk, Wallach (concurring):

  • En Banc Review/Obviousness: There is no basis for a rehearing en banc because the original panel was correct in holding that unexpected results dated after the invention date cannot be considered in an obviousness analysis under longstanding Supreme Court authority.

O’Malley (concurring):

  • En Banc Review/Obviousness: The panel properly held a claim obvious based on the record presented to the panel. Later-discovered evidence of differences between the prior art and the invention may be relevant to obviousness, but cannot be used as evidence of what one of skill in the art understood at the time the invention was made. The panel decision did not foreclose the possibility that post-invention evidence regarding the properties of either the invention or the prior art might be persuasive in the appropriate case. Since the opinion of the panel did not make dramatic changes to the law, and was properly based on the record presented below, en banc consideration is not warranted.

Newman, Lourie, and Reyna (dissenting)

  • En Banc Review/Obviousness: The panel decision introduced substantial uncertainty into the law of obviousness for pharmaceutical and chemical patents. It conflicted with precedent, including by (1) imposing new restrictions on comparative data to show unexpected properties, (2) misapplying secondary considerations of nonobviousness, (3) holding that an unexpected property is insufficient by itself to show nonobviousness, and (4) oversimplifying the distinction between “difference in degree” and “difference in kind.” Because of the “fresh uncertainty” on the availability of reliable patent rights, and the lack of underlying policy reasons for these changes in law, the petition for en banc review should have been granted.

Taranto, Lourie, and Reyna (dissenting)

  • En Banc Review/Obviousness: En banc review should be granted because the panel’s decision raises questions about the “core aspects of the widely used approach to obviousness analysis.” Because the panel’s plenary review was focused on case-specific applications of the facts and doctrine, an en banc review would allow more of a focus on and “full analysis of the doctrinal issues.” In particular, the panel had no occasion to rule on the doctrinal relationship between a finding of unexpected results and a finding of the prima facie case elements for obviousness.