Opinion
No. 90-1137.
May 22, 1991. Order June 13, 1991.
Gerald P. Dodson, Townsend Townsend, San Francisco, Cal., for plaintiff-appellant.
Thomas E. Schatzel, Law Offices of Thomas E. Schatzel, Santa Clara, Cal., for defendant-appellee.
Appealed from: U.S. District Court for the Northern District of California; Judge Williams.
Before NIES, Chief Judge, RICH, NEWMAN, ARCHER, MAYER, MICHEL, PLAGER, LOURIE, CLEVENGER, and RADER, Circuit Judges.
CORRECTED ORDER OF MAY 22, 1991
The court sua sponte will rehear the appeal in banc.
The judgment entered on April 25, 1991, is VACATED, and the accompanying opinion is withdrawn.
Additional briefing and oral argument is not indicated at this time.
The additional copies of briefs as required by Fed. Cir.R. 35(f) shall be delivered on or before May 28, 1991.
ORDER OF JUNE 13, 1991
The Court in banc requests additional briefing on the following questions:
1. In a patent infringement suit, should a presumption of undue delay or a presumption of material prejudice or both arise in connection with a laches defense where the delay in filing suit exceeds six (6) years? See, e.g., Jamesbury Corp. v. Litton Industrial Prods., 839 F.2d 1544, 5 USPQ2d 1779 (Fed. Cir. 1988), cert. denied, 488 U.S. 828, 109 S.Ct. 80, 102 L.Ed.2d 57 (1988).
2. If the answer to question 1 is inconsistent with the rule in other fields of law, see Cornetta v. United States, 851 F.2d 1372 (Fed. Cir. 1988), what justification is there for having a different rule?
3. In a patent infringement suit, what should be the elements of an estoppel defense?
The court does not preclude other relevant issues from being addressed in the supplemental briefs but advises that the original briefs will be considered by the in banc court.
The supplemental briefs will be filed in accordance with the following schedule:
1. Appellant's supplemental brief shall be due on or before July 12, 1991;
2. Appellee's supplemental brief shall be due on or before August 8, 1991;
3. Appellant's supplemental reply brief, if any, shall be due on or before August 22, 1991.
The principal briefs shall be limited to thirty (30) pages. The reply brief shall be limited to ten (10) pages.
Oral argument will be heard on September 16, 1991, at 2:00 pm. Each side will be allowed twenty (20) minutes.
Amicus curiae briefs may be filed in accordance with the rules.