OpenJurist

45 F3d 442 Hilton Davis Chemical Co v. Warner-Jenkinson Company Inc

HILTON DAVIS CHEMICAL CO., Plaintiff-Appellee,
v.
WARNER-JENKINSON COMPANY, INC., Defendant-Appellant.

No. 93-1088.

United States Court of Appeals, Federal Circuit.

Dec. 3, 1993.

45 F.3d 442
NOTICE: Federal Circuit Local Rule 47.6(b) states that opinions and orders which are designated as not citable as precedent shall not be employed or cited as precedent. This does not preclude assertion of issues of claim preclusion, issue preclusion, judicial estoppel, law of the case or the like based on a decision of the Court rendered in a nonprecedential opinion or order.

1

REHEARING IN BANC.

ORDER

2

The appeal, having been heard by a panel of the court and, thereafter, a majority of circuit judges in regular active service having acted sua sponte in accordance with 28 U.S.C. Sec. 46(c) and Fed.R.App.P. 35(a),

3

IT IS ORDERED that the appeal shall be decided in banc.

4

IT IS FURTHER ORDERED that the parties shall file supplemental briefs on the following schedule:

5

The brief for appellant on rehearing in banc shall be filed on or before January 7, 1994. The brief for appellee on rehearing in banc shall be filed on or before February 4, 1994.

6

The following questions only shall be addressed in the briefs:

7

(1) Does a finding of patent infringement under the doctrine of equivalents require anything in addition to proof of the facts that there are the same or substantially the same (a) function, (b) way, and (c) result, the so-called triple identity test of Graver Tank v. Linde Air Products Co., 339 U.S. 605, 85 USPQ 328 (1950), and cases relied on therein? If yes, what?

8

(2) Is application of the doctrine of equivalents by the trial court to find infringement of the patentee's right to exclude, when there is no literal infringement of a claim, discretionary in accordance with the circumstances of the case?

9

(3) Is the issue of infringement under the doctrine of equivalents an equitable remedy to be decided by the court, or is it, like literal infringement, an issue of fact to be submitted to the jury in a jury case?

10

Amicus curiae briefs on rehearing in banc may be filed in accordance with Rule 29.

11

Oral argument will be scheduled after the briefs have been filed.