Hilton Davis Chemical Co., Plaintiff-appellee, v. Warner-jenkinson Company, Inc., Defendant-appellant, 45 F.3d 442 (Fed. Cir. 1993)

REHEARING IN BANC.

ORDER

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. § 46(c) and Fed. R. App. P. 35(a),

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

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

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.

The following questions only shall be addressed in the briefs:

(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?

(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?

(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?

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

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