Save the Date -- Initial Scheduling of the Tafas/GSK v. Dudas Appeal

Earlier this month, we reported that the U.S. Patent and Trademark Office had filed a Notice of Appeal with the Court of Appeals for the Federal Circuit, challenging the decision of Judge William Cacheris of the U.S. District Court for the Eastern District of Virginia to permanently enjoin the Patent Office's continuation and claims rules package in the consolidated cases of Tafas/Smithkline Beecham Corp. v. Dudas.  Judge Cacheris' ruling was based on his determination that the continuation and claims rules "are substantive in nature and exceed the scope of the USPTO's rulemaking authority under 35 U.S.C. § 2(b)(2)."

The Federal Circuit has now issued a Notice of Docketing, which sets some of the deadlines for the appeal.  Among the deadlines that have been set are the following:

• June 2:  The Appellants (Dudas and the USPTO) must serve on the Appellees (Tafas and GSK) a designation of materials from which the appendix will be prepared;

• June 18:  The parties must file a Docketing Statement, indicating inter alia the relief being sought and providing a brief statement of the issues to be raised on appeal;

• July 3:  The parties must file a Certificate of Compliance with Federal Circuit Rule 11(d), which requires the parties to review the record to determine whether any portions subject to a protective order must remain protected on appeal; and

• July 18:  Under Federal Circuit Rule 31, the Appellants have sixty days from the docketing date to serve and file their opening brief.

The Appellees' briefing (and subsequent briefing) will be cued off the date by which the Appellants file their opening brief, so those dates are yet to be determined.  However, assuming that the parties each take the maximum time to file their briefs, and seek no extensions, the Appellees' brief would be due on August 27th (the Appellees have forty days after the Appellants' brief is served to file their own brief), and the Appellants' reply brief would be due on September 10th (the Appellants have up to fourteen days to serve and file a reply brief, though the time to file a reply can be shortened to ensure that the reply is served in advance of oral argument).  The principal briefs are limited to 30 pages, or up to 14,000 words, and the reply brief is limited to 15 pages, or 7,000 words.

Sherri Oslick, Benjamin Huber, and Donald Zuhn contributed to this report.

For information regarding this topic, please see:

• "USPTO to Appeal Tafas/GSK v. Dudas," May 7, 2008
• "BIO Responds to Events of the Day," April 1, 2008
• "No April Fool's Joke -- Tafas and GSK Win on Summary Judgment," April 1, 2008
• "PLI's John White Discusses Tafas/GSK v. Dudas," February 11, 2008
• "Judge Cacheris Takes GSK Case under Advisement," February 8, 2008
• "GSK Summary Judgment Hearing Set for Friday Morning," February 7, 2008
• "New Briefing Deadline Set In PTO Rules Case," December 18, 2007
• "Court Sets Summary Judgment Schedule in New Rules Case," December 3, 2007
• "No Discovery in New Rules Case," November 27, 2007
• "Tafas v. Dudas; SmithKline Beecham Corp. v. Dudas (E.D. Va. 2007)," October 31, 2007
• "USPTO Late to Its Own Party," October 31, 2007
• "GSK Secures Injunction," October 31, 2007 (includes links to Court's Order and Opinion)
• "Senator Schumer Sends a Signal," October 30, 2007
• "GSK TRO/Preliminary Injunction Hearing," October 29, 2007
• "AIPLA Supports GSK's Lawsuit Against the Patent Office's New Rules," October 25, 2007
• "GSK Brings Out the Big Guns Opposing the New Continuation and Claims Rules," October 24, 2007
• "Hooray! - (Finally) the Big Dogs Have Joined the Hunt," October 11, 2007
• "Rules Challenger Amends Complaint and Withdraws PI Motion," September 11, 2007
• "Inventor Sues PTO to Prevent New Continuation and Claims Rules from Taking Effect," August 30, 2007

Comments

[T]

We are past the August 27 date suggested in the posting. Has GSK/Tafas filed a response?

[Donald Zuhn]

T:

Unfortunately, the Federal Circuit does not make briefs and other case documents available for download via PACER, nor does it provide a publicly-accessible summary of documents filed in a given appeal. Therefore, unless GSK or Dr. Tafas provides an update, we have no way of knowing whether a response brief was filed last week.

Don

[T]

Don:

Thanks for the quick reply. Please also thank Dr. Oslick for her new posting.

[Donald Zuhn]

T:

I wanted to correct one statement in my comment: the CAFC does provide a listing of filed documents in pending appeals. In addition, I have learned that while filed CAFC briefs can not be obtained via PACER, they can be obtained from http://www.briefserve.com/home.asp (albeit at a cost of $25 per brief).

Thanks for your comments.

Don