Public Interest Groups Back USPTO in Tafas v. Dudas Appeal

    By Donald Zuhn --

Last week, the Public Patent Foundation (PUBPAT) announced that a coalition of consumer advocacy and public interest groups had filed an amici brief in the Tafas v. Dudas appeal.  The brief, which was signed by PUBPAT Executive Director Dan Ravicher (below left), was filed on behalf of PUBPAT, AARP, the Computer & Communications Industry Association (CCIA), Consumer Watchdog, Essential Action, Initiative for Medicines, Access & Knowledge (I-MAK), Prescription Access Litigation (PAL), Public Knowledge (PK), Research on Innovation (ROI), and the Software Freedom Law Center (SFLC).

The public interest groups wasted few of the brief's 30 pages explaining the perceived flaws in Judge Cacheris' opinion, electing instead to repeat the mantra that the continuation and claims rules were good because they "would significantly advance both the general public interest and the specific aspects of the public interest that [the amici] each separately exist to represent."  According to the brief, these specific aspects include facilitating the entry of generic drugs to the marketplace (AARP), fighting embryonic stem cell patents that allegedly impede research efforts (Consumer Watchdog), challenging illegal prescription drug price inflation by pharmaceutical manufacturers (PAL), and advancing the development and free distribution of Free and Open Source Software (SFLC).

Outside of a few generalized statements about "curtail[ing] abusive behavior by exploitative patent applicants" and improving patent quality, the brief provides little explanation as to how the continuation and claims rules would allow the amici to achieve their specific objectives.  With respect to curtailing abusive behavior, the amici argue that the continuation and claims rules "do not restrict any of the rights of patent applicants under the law," but rather, "strike a fair and reasonable balance between preserving the rights of patent applicants to obtain all of the patent protection they deserve and ensuring that those patent applicants who want to game the system for undue advantage are thwarted in such attempts."  The amici then trot out Lemley (at right) and Moore's "Ending Abuse of Patent Continuations" to establish that an "endless stream of continuation applications" results in a "wearing down" of examiners, which in turn leads to the issuance of undeserved broad patents.

The brief also labels the practice of submitting claims that read on a competitor's product in a later filed continuation application as a "perverse manipulation of the patent system" that "defeats the public notice function of patent claims."  As for the assertion that the continuation and claims rules do not restrict the rights of patent applicants, the amici contend that applicants denied an additional continuation (after using up their two continuations as a matter of right) are not left without a remedy, but can elect to pursue an appeal to the Board, and if that doesn't work, take their appeal to the Federal courts.  For the amici, the costs of such appeals must be small when compared with the opportunity to eliminate a yet to be quantified amount of "abusive procedural gamesmanship" committed by a yet to be determined percentage of patent applicants.

Not surprisingly, the amici take the position that "any claims desired and deserved by a patent applicant can and should be included in the original application, an amendment to it, or any of the continuation applications allowed under the Final Rules as a matter of right without justification."  As luck would have it, the continuation and claims rules would have provided precisely the number of continuation applications that an applicant would have needed to secure all of the claims it "desired or deserved."

The brief treats unlimited claiming as it does the right to file unlimited continuations, arguing that "some applicants purposefully attempt to overwhelm the USPTO examiner by submitting dozens, if not hundreds, of claims in their application with the hope that the examiner will simply not have sufficient time to fully analyze and review each one."  Alluding to the creation of Examination Support Documents (ESDs) under the continuation and claims rules, the amici argue that applicants "who seek more than a reasonable number of claims [should] provide some assistance to the USPTO in reviewing that application."  Notwithstanding the ESD requirement, the amici argue that the continuation and claims rules "do not in any way preclude applicants from applying for as many claims as they would like, nor do they take away any right granted to patent applicants under the Patent Act."

The brief concludes by taking up the second of its generalized statements, i.e., that the continuation and claims rules would improve patent quality.  The amici argue that "there have been several patents that were used to preclude competition in markets worth billions of dollars that were later proven to be undeserved," and that "this phenomenon repeatedly occurs is the pharmaceutical industry."  As evidence of this "phenomenon," the brief points to the invalidations of the paclitaxel patent in Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368 (Fed. Cir. 2001), and the fluoxetine hydrochloride patent in Eli Lilly & Co. v. Barr Labs., 251 F.3d 955 (Fed. Cir. 2001).  However, if it only takes one or two invalidations to establish that the patent system is in desperate need of repair and that the continuation and claims rules present a reasonable solution, then opponents of these rules will have a difficult time convincing the amici that the continuation and claims rules went too far and would have caused far too much damage to the public interest.

For information regarding this topic, please see:

• "USPTO Files Opening Brief in Tafas v. Dudas Appeal," July 22, 2008
• "Save the Date -- Initial Scheduling of the Tafas/GSK v. Dudas Appeal," May 21, 2008
• "USPTO to Appeal Tafas/GSK v. Dudas," May 7, 2008
• "No April Fool's Joke -- Tafas and GSK Win on Summary Judgment," April 1, 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)
• "GSK TRO/Preliminary Injunction Hearing," October 29, 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

[EG]

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.

[Kevin E. Noonan]

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.

[JD]

"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.

[EG]

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.

[Kevin E. Noonan]

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.