Judge Lourie: A panel is entitled to err

Claim interpretation: a big toothache at the Federal Circuit?

In the order denying en banc consideration in Amgen v. Hoechst, Judge Lourie concurred and stated: "A panel is entitled to err without the full court descending upon it." Judge Lourie also felt that the interpretation of the claim limitation "a therapeutically effective amount" is case-specific. He also noted that "while the result may be of exceptional importance to the parties, it does not seem to be so to the law."

Although lawyers may understand the point about the limited purposes for en banc review, members of the general public may find it disturbing that appellate judges will allow known errors in panel decisions to pass by without correction. Losing a case for incorrect reasons is of profound importance to the party who lost, but who should not have lost. Imagine losing a case which hinged on the identity of Lewis acid, with the panel pointing to a definition which relied on the distinct concept of electron affinity.

Among others, Judge Moore dissented. In footnote 1, Judge Moore cited Amgen v. Hoechst, 339 F. Supp. 2d 202 (D. Mass. 2004). Recall the district court in Biogen v. Trustees of Columbia University, 332 F. Supp. 2d 286 (D. Mass. 2004) cited Lemley (and Moore on Ending Abuse of Patent Continuations), although for a different proposition than that which appeared in "Patenting Nanotechnology"