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« Book Review: The Generic Challenge | Main | USPTO News: Patent Office Proposes Rules Limiting Facsimile Submission of Papers and Setting Font Size Requirement »

August 05, 2008

Comments

Don,

The PUBPAT brief is nothing but "bleeding-heart" rhetorical nonsense. It never addresses the issue of whether the USPTO has the authority to enact these Rules (it doesn't, as Cacheris correctly pointed out and which the Federal Circuit is most likely to affirm). Whichever Federal Circuit panel gets this case is unlikely to give this PUBPAT brief much consideration and rightly so.

Well, not so fast EG. Judge Moore is on the court now, and so any panel with her sitting on it is one vote away from ruling for the Patent Office. There are certainly panels that will rule the "right" way, but what will happen if the panel is Judge Moore, any of the other judges, and a district court judge sitting by designation? If the CAFC wants to avoid what will almost certainly be a controversial decision (and perhaps Supreme Court review), ruling for the PTO is the outcome - if the court rules against the Office before the present Administration leaves town, the solicitor will ask the Supremes to review the decision, and the Court will most likely grant cert as they have done in almost every case where the solicitor has asked or recommended that they do (and at least one where he didn't).

SO perhaps the most positive thing we can hope for is that the parties take extra time for briefing and the Court hear the case later in the fall, with a decision coming some time in late January.

Thanks for the comment.

"Judge Moore is on the court now, and so any panel with her sitting on it is one vote away from ruling for the Patent Office."

I don't think that's a given. She is a federal appeals court judge now. We have to assume that she's going to review the law, weigh the arguments and evidence, and reach an objective conclusion.

Remember that in her article with Prof. Lemley, J. Moore did acknowledge that limitations on continuations may have to be implemented by Congress.

Kevin,

Thanks for the reply. Yeah, if the Federal Circuit had complete amnesia, it could change course and rule in the USPTO's favor (on what basis in reason, God only knows). But as JD pointed out, even Moore can't ignore the long line of Federal Circuit/CCPA precedent that says the USPTO has no authority to enact these Rules (and which even the USPTO before this latest Rules mess acknowledged it didn't have). There's also the real possibility that this appeal will, at some point, involve the Federal Circuit en banc, given the importance of this ruling, and I think the Federal Circuit judges, as a whole, realize what would happen to the concept of stare decisis if they changed course. I also don't think the Federal Circuit is going to be "cowed" by the potential threat of review by SCOTUS; in particular, that's not in Chief Judge Michel's make up to back away just because SCOTUS is sitting over the Federal Circuit's shoulder. And frankly, if SCOTUS were to grant cert at the behest of U.S. Solicitor General and reverse the Federal Circuit and rule in favor of the USPTO, we might as well consider the authority of the Federal Circuit "null and void" in the patent area, as well as the ability to reign in any agency, like the current USPTO, that operates in defiance of the rule of law, or even reasonableness. While some in academia look with glee at the Federal Circuit getting repeatedly shelled by SCOTUS, I don't, especially since the intention of Congress in creating the Federal Circuit in 1982 was to move the patent jurisprudence primarily to one appellate court, not SCOTUS.

EG and JD:

I agree with you both, but the perception that the PTO acts outside the law is one that requires first-hand experience with the Office under the Bush/Dudas administration to fully appreciate. When an agency goes so far over the line, and gilds their practices with rhetoric about "quality" and "innovation" and "efficiency," the resulting smokescreen can lead to anomalous results. And since Judge Moore's notoriety as a patent law expert played no small role in her elevation to the CAFC, I don't see her becoming Solomon on the issues of continuation or claim limitations.

And the sad fact is that this Supreme Court, one of the most politically-influenced in history, seems to have bought into the arguments of the anti-patent crowd, which is not suprising in view of its 19th Century view of patents and their constitutional role.

Thanks for the comments.

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