     United States Court of Appeals for the Federal Circuit

                                        04-1005


                                 MERCK & CO., INC.,

                                                       Plaintiff-Appellee,

                                           v.

                       TEVA PHARMACEUTICALS USA, INC.,

                                                       Defendant-Appellant.



       John F. Lynch, Howrey Simon Arnold & White, LLP, of Houston, Texas, filed a
combined petition for panel rehearing and rehearing en banc for plaintiff-appellee. With
him on the petition were Nicolas G. Barzoukas and Richard L. Stanley. Of counsel on
the petition were Paul D. Matukaitis, Edward W. Murray and Gerard M. Devlin, Merck &
Co., Inc., of Rahway, New Jersey.

      James Galbraith, Kenyon & Kenyon, of New York, New York, filed a response to
the petition for defendant-appellant. With him on the response were Maria Luisa
Palmese and William G. James, II.

       William F. Lee, Wilmer Cutler Pickering Hale and Dorr LLP, of Boston,
Massachusetts, filed an amicus curiae brief for the Pharmaceutical Research and
Manufacturers of America. With him on the brief was John M. Golden. Of counsel on
the brief was William G. McElwain, of Washington, DC.

Appealed from:    United States District Court for the District of Delaware

Judge Joseph J. Farnan, Jr.
     United States Court of Appeals for the Federal Circuit
                                        04-1005

                                 MERCK & CO., INC.,

                                                Plaintiff-Appellee,

                                           v.

                       TEVA PHARMACEUTICALS USA, INC.,

                                                Defendant-Appellant.

        ON PETITION FOR PANEL REHEARING AND REHEARING EN BANC

Before MICHEL, Chief Judge, NEWMAN, MAYER, LOURIE, CLEVENGER, RADER,
BRYSON, GAJARSA, LINN, DYK, and PROST, Circuit Judges.

                                      ORDER

      A combined petition for panel rehearing and rehearing en banc was filed by the

Appellee, and a response thereto was invited by the court and filed by the Appellant.1

The petition for rehearing was referred first to the merits panel that heard the appeal.

Thereafter, the petition for rehearing en banc, response, and the amicus curiae brief

were referred to the circuit judges who are authorized to request a poll whether to

rehear the appeal en banc. A poll was requested, taken, and failed.

      Upon consideration thereof,

      IT IS ORDERED THAT:

      (1) The petition for panel rehearing is denied.

      (2) The petition for rehearing en banc is denied.

      (3) The mandate of the court will issue on April 28, 2005.


1
   An amicus curiae brief was filed by the Pharmaceutical Research and Manufacturers
of America.
      NEWMAN and LOURIE, Circuit Judges, would rehear the appeal en banc.

      LOURIE, Circuit Judge, with whom MICHEL, Chief Judge, and NEWMAN, Circuit

Judge, join, dissents in a separate opinion.

      SCHALL, Circuit Judge, did not participate in the vote.


                                                      FOR THE COURT


_April 21, 2005_                                      _s/ Jan Horbaly_
    Date                                              Jan Horbaly
                                                      Clerk

cc:   John F. Lynch, Esq.
      James Galbraith, Esq.
      William F. Lee, Esq.




04-1005                                  2
    United States Court of Appeals for the Federal Circuit
                                        04-1005

                                 MERCK & CO., INC.,

                                                      Plaintiff-Appellee,

                                           v.

                        TEVA PHARMACEUTICALS USA, INC.,

                                                      Defendant-Appellant.


LOURIE, Circuit Judge, with whom MICHEL, Chief Judge, and NEWMAN, Circuit
Judge, join, dissenting from order denying rehearing en banc.


      I respectfully dissent from the court's declining to hear this case en banc. In my

opinion, the panel erroneously concludes that commercial success is not probative

because "others were legally barred" from commercially testing certain ideas in the prior

art. Moreover, I believe the panel erred in linking commercial success to the failure of

others.

      Commercial success is a fact question, and, once it is established, as found here

by the trial court, the only other question is whether the success is attributable to the

claimed invention (“nexus”), rather than to other factors such as market power,

advertising, demand for all products of a given type, a rising economy that “lifts all

boats,” etc. It is not negatived by any inability of others to test various formulations

because of the existence of another patent. Success is success. The panel's rule is

especially unsound in the context of an improvement patent, as here, because it holds
in effect that commercial success for an improvement is irrelevant when a prior patent

dominates the basic invention.

      Commercial success is also independent of any “failure of others,” as that is

another, separate secondary consideration.

       Respectfully, the full court should have reheard the appeal to eliminate the

confusion in the law that the panel opinion creates.




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