Product By Any Process Anticipates Product-By-Process Claim

In SmithKline Beecham Corp. v. Apotex Corp. (Fed. Cir.; February 24, 2006), Circuit Judge Dyk wrote for the court holding that a product-by-process claim is unpatentable if the same product is made by a different process:

As this history of cases from the Supreme Court, our court, and our
predecessor court make clear, anticipation by an earlier product patent cannot
be avoided by claiming the same product more narrowly in a product-process
claim. It makes no difference here whether the ‘944 patent’s product-by-process
claims are construed broadly to cover the product made by any process or
narrowly to cover only the product made by a dry admixing process. Either way,
anticipation by an earlier product disclosure (which disclosed the product
itself) cannot be avoided. While the process set forth in the product-by-process
claim may be new, that novelty can only be captured by obtaining a process
claim. We agree with the district court’s conclusion that the ‘723 patent
disclosure anticipated the identical product claimed by the ‘944 patent even
though that product was produced by an allegedly novel process. 7

[Footnote 7] Contrary to the dissent’s suggestion, the court does not hold that a claim to a product is never limited by process limitations. We simply hold that a prior art disclosure of a product precludes a future claim to that same product, even if it is made by an allegedly novel process. We take no position on whether a product-by-process claim is construed with reference to the process steps.

However, as noted by Professor Wegner the dissent by Circuit Judge Newman suggests that a product-by-process claim is patentable if the same product is made by a different process than disclosed for a prior art product:

The law of "anticipation" does not change in the special situation where claims contain both product and process limitations. The panel majority perpetuates a confusing misunderstanding of precedent governing product-by-process claims, ignoring the opportunity and need for clarification.

Such an exception exists for inventions directed to a novel product that, although patentable as a product, cannot be adequately described other than by the way it was made; the process may or may not itself be novel, but that aspect is deemed irrelevant to the claim to the new product. This exception was created to accommodate the rare circumstances to which it has been applied, as illustrated in In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985) and Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565 (Fed. Cir. 1991). Yet the courts, including my colleagues on this panel, do not appear to have understood the role of the exception, as illustrated in the holding in this case. Thus my colleagues today adopt a one-rule-fits-all rule for claims with process limitations, a rule that is seriously flawed. Instead of taking this opportunity to clarify the confusion surrounding this issue, the court
exacerbates it. I must, respectfully, dissent. . . .

There is now "a 180 degree and completely irreconcilable conflict between Scripps Clinic (infringement by any process) and Atlantic Thermoplastics Co., Inc. v. Faytex Corp., 970 F.2d 834 (Fed. Cir. 1992)(Rader, J.)(infringement by only the same process)," concludes the Good Professor. He is calling for an en banc review of Scripps Clinic.