Re-hearing en banc granted to The Medicines Company in Hospira case
As to The Medicines Company v. Hospira
Plaintiff-Appellant The Medicines Company filed a
combined petition for panel rehearing and rehearing en
banc. The petition was considered by the panel that
heard the appeal and thereafter referred to the circuit
judges who are in regular active service. A response was
invited by the court and filed by Defendant-CrossAppellant
Hospira, Inc. A poll was requested and taken,
and the court decided that the appeal warrants en banc
Upon consideration thereof,
IT IS ORDERED THAT:
(1) The petition for rehearing en banc of PlaintiffAppellant
The Medicines Company is granted.
(2) The court’s opinion of July 2, 2015, is vacated, and
the appeal is reinstated.
(3) The parties are requested to file new briefs. The
briefs should address the following issues:
(a) Do the circumstances presented here constitute
a commercial sale under the on-sale bar of 35
U.S.C. § 102(b)?
(i) Was there a sale for the purposes of § 102(b)
despite the absence of a transfer of title?
(ii) Was the sale commercial in nature for the
purposes of § 102(b) or an experimental use?
(b) Should this court overrule or revise the principle
in Special Devices, Inc. v. OEA, Inc., 270 F.3d
1353 (Fed. Cir. 2001), that there is no “supplier exception”
to the on-sale bar of 35 U.S.C. § 102(b)?
(4) The new en banc briefs shall be electronically filed
in the ECF system, and thirty paper copies of each brief
shall be filed with the court. Two paper copies of each en
banc brief shall be served on opposing counsel. Given
that Hospira, Inc. was the original cross-appellant on the
issues to be addressed, Hospira, Inc.’s en banc brief is due
45 days from the date of this order. The Medicines Company’s
en banc response brief is due within 30 days of
service of Hospira, Inc.’s en banc brief, and the reply brief
within 15 days of service of the response brief. Briefs
shall adhere to the type-volume limitations set forth in
Federal Rule of Appellate Procedure 32 and Federal
Circuit Rule 32.
(5) Briefing should be limited to the issues set forth
(6) The court invites the United States Department of
Justice to file a brief expressing the views of the United
States as amicus curiae. Other briefs of amici curiae will
be entertained, and any such amicus briefs may be filed
without consent and leave of court but otherwise must
comply with Federal Rule of Appellate Procedure 29 and
Federal Circuit Rule 29.
(7) The parties are directed to file with the court thirty
paper copies of their original briefs and joint appendix
within 17 days from the date of this order.
(8) Oral argument may be held at a time and date to
be announced later.