By Kevin E. Noonan --
The Federal Circuit today ordered en banc review of Tafas v. Doll, vacating the panel decision of March 20, 2009. The Court's decision was reported per curiam and Judge Lourie did not participate in the decision to rehear the appeal en banc.
The Court in its order noted that plaintiff-appellees Tafas and Glaxo SmithKline had requested rehearing by the original panel and rehearing en banc (see Patent Docs reports on Tafas Petition and GSK Petition), and that the Court had invited briefing from the U.S. Patent and Trademark Office as appellant and amici. The Court said that the en banc panel will consider the briefs filed by the parties to date as well as additional amicus briefs, and that the parties could file additional briefs, setting a deadline for appellants' (the USPTO) briefs 30 days from today's order, or August 5, 2009, with appellees Tafas and Glaxo SmithKline's briefs being due 20 days thereafter, on August 26th.
Amici having filed briefs to date include the American Association of Retired Persons (AARP), the Computer and Communications Industry Association, Consumer Watchdog, Essential Action, the Initiative for Medicines, Access and Knowledge, Prescription Access Litigation, Public Knowledge, the Public Patent Foundation, Research on Innovation, and the Software Freedom Law Center (all represented by Dan Ravicher; see "Public Interest Groups Back USPTO in Tafas v. Dudas Appeal"), Amber Wave Systems Corp., the AIPLA, BIO, Dolby Labs, Elan Pharmaceuticals, Inc., Fallbrook Technologies, Inc., General Electric Co., IPO, Intellectual Ventures, Interdigital Communications, LLC, Monsanto Co., Nano-Terra, Inc., the N.Y. IPLA, Pax Streamline, Inc., PhRMA, Ruckus Wireless, Inc., Seven Networks, Inc., Sonic Wall, Inc., Tessera, Inc., the Washington Legal Foundation, the William Mitchell College of Law Intellectual Property Institute (represented by R. Carl Moy), and Arthur Klein, Arti Rai, Craig Nail, John R. Thomas, Katherine Strandburg, Mark Lemley, Mark McKenna, Marshall Leaffer, Michael Risch, Peter Menell, Robin Feldman, Stuart Benjamin, and the Intellectual Property and Administrative Law Professors (all represented by Mark Lemley; see "Law Professors Back USPTO in Tafas v. Dudas Appeal"). Additional briefs, from these or other amici, will be due no later than 7 days after the filing date of the brief for a party whose position the amicus is supporting, or 7 days after the appellant's brief is filed if the amicus is supporting no party, pursuant to Fed. R. App. Pro. 29 and Federal Circuit Rule 32.
What follows constitutes crystal ball-gazing, since the Court's order contained no inkling of the circumstances or rationale that occasioned the Court's decision to rehear the appeal en banc. The original panel decision (by Judge Prost and joined by Judge Bryson, with Judge Rader dissenting), readers will recall, determined that all of the rules Tafas and GSK objected to were procedural and thus fell within the ambit of the Office's rulemaking authority (see Patent Docs report). On the other hand, the panel found that proposed Rule 78, which limited the number of continuation applications that could be filed, was contrary to the plain language and meaning of 35 U.S.C. § 120, and thus was void under 35 U.S.C. § 2(b)(2), which required any Patent Office rulemaking not to be "contrary to law." The effect of the panel's decision was to uphold the District Court's injunction as to Rule 78, which effectively vitiated the other rules. Indeed, implementing these rules would exacerbate rather than ameliorate the problem that purportedly motivated the rules in the first place, the overwhelming backlog of unexamined applications.
The rehearing en banc could (and probably should) be directed towards establishing firm parameters on the scope of the Patent Office rulemaking authority. It could also merely reverse the one portion of the decision that went in Tafas/GSK's favor. What is important to keep in mind is that a rehearing en banc could moot the remaining grounds for objecting to the rules not ruled-upon by the District Court, thus giving a green light for the Office to implement the rules. There has been no indication that the Obama administration is in favor of these rules (although the presence of Arti Rai as an Obama advisor has given many pause), nor what Director-designate David J. Kappos thinks about the rules. (In this regard, it may be important to remember that Mr. Kappos filed an affidavit in support of the AIPLA's amicus brief to the district court supporting the Tafas/GSK challenge to the "new rules"; see "AIPLA Supports GSK's Lawsuit Against the Patent Office's New Rules.") For now, the best strategy for those who oppose the rules would appear to be filing amicus briefs with the Court.
For additional information regarding this topic please see:
• "GSK Files Petition for Rehearing in Tafas v. Doll," June 4, 2009
• "Tafas Files Petition for Rehearing in Tafas v. Doll," June 3, 2009
• "Tafas v. Doll (Fed. Cir. 2009)," March 22, 2009
• "Law Professors Back USPTO in Tafas v. Dudas Appeal," October 23, 2008
• "Public Interest Groups Back USPTO in Tafas v. Dudas Appeal," August 5, 2008
• "AIPLA Supports GSK's Lawsuit Against the Patent Office's New Rules," October 25, 2007