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« Court Report | Main | Tafas v. Doll (Fed. Cir. 2009) »

March 22, 2009



I remember them enough to wish that this "nightmare" was over. Pray that the Federal Circuit grants a hearing en banc and follows Judge Rader's lead. Judges Prost and Bryson are clueless to the reality here, as well as precedent in the Federal Circuit. For example, they uphold the ESDs, but conveniently ignore the Federal Circuit saying that patent searches aren't required of applicants. Also, if "shall" in 35 USC 120 means no limits on continuations, then why does "shall" under 35 USC 132 (the RCE statute) mean something different? Finally, how can Prost and Bryson change course on allowing limits on the number of claims when the Federal Circuit has made clear that, with the possible exception of prolixity, there are none?


I stand by my prior comments: Judges Prost and Bryson are clueless about the authority of the PTO, the impact of these Rules substantively, and that the PTO intends these Rules to allow no flexibility for more than 2 continuations and one RCE per family. Ignoring the PTOs Comments on these Rules when issued as "non-binding" is completely naive about the PTO's expressed intention. Only Judge Rader understands the reality here. Hopefully the Federal Circuit will grant an en banc hearing and follow Rader's lead.


Before I forget, and as astutely pointed out on another blog, let's not forget the "Trojan Horse" in modified 37 CFR 1.104(a) to add "and other requirements" to
the phrase "the examination shall be
complete with respect both to
compliance of the application or patent
under reexamination with the
applicable statutes and rules" which would allow the PTO to apply the requirements of the MPEP, even though the MPEP can and is modified without any "notice or comment" required by the APA.


Another thought to consider. Having gotten over my initial (and very emotional) reaction to Judges Prost and Bryson having “precedential amnesia”, the fact is with the continuation limitation portion of this Rule package blocked by even the Federal Circuit, the PTO has no choice but to modify this package to take that block into account, or else the package won’t be internally consistent, and thus highly vulnerable to further legal attack. That being said, you have to wonder whether the PTO has the energy (and the backing of the current Obama administration) to continue this fight if Tafas/GSK pursue this suit (likely) in district court, including renewing the other arguments that Cacheris chose not to address.

Any reissuing of these Rules (Cacheris may even block any attempt to reissue these Rules until the current Tafas/GSK suit is over), which the PTO dare not do without offering “comment and notice” to the public, would create another “firestorm” of comments where those commenting will be watching the PTO carefully as to how they cross the “t”s and dot the “i”. Any slip here by the PTO will certainly draw fire, including potential additional suits (now that blood has already been drawn) challenging the reissued Rules. That potentially means a drawn out battle taking years to resolve, which leaves you wondering whether the Obama administration would expend its political capital to let such “blood letting” occur for an issue that didn’t start on its watch. More significantly, given the current budget crisis facing the PTO (and of its own making by causing the allowance rate to dive to close to 40%), one must wonder whether the PTO has the resources to push these Rule packages much farther.

Dear EG:

I think the most likely thing is that Judge Cacheris will issue a scheduling order, perhaps asking for further briefing but maybe just setting a time for his ruling on the other issues on summary judgment. Of course, that could set the stage for further appeals to the CAFC, presumably with a different panel and on different grounds, leading (perhaps) to a different result. THEN en banc review would make sense, since it would not be piecemeal and would be in a posture to 1) give us the CAFC's "final word" on the metes and bounds of PTO authority and 2) be in position for Supreme Court review.

Thanks for the comment.


The scenario you suggest has as good a chance as any I can think of as being the right one. Right now, I might do better flipping a coin (or rolling a ten-sided dice) than trying to prognosticate what the Federal Circuit might eventually do here. The really worrisome outcome is if this suit peters out before it gets back to the Federal Circuit, leaving us with the Prost/Bryson naive/clueless/"precedential amnesia" opinion as the controlling case law; makes me ill to think of this possibility.

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