Parties Move to Defer Tafas En Banc Hearing Pending New PTO Director Confirmation

The private plaintiffs and the government, in a case challenging the Patent and Trademark Office's authority to set new rules for patent application continuations and claims, jointly asked the U.S. Court of Appeals for the Federal Circuit July 24 to stay its en banc review, including the briefing schedule and the scheduled Oct. 7 oral argument (Tafas v. Doll, Fed. Cir., No. 2008-1352, motion entered 7/24/09).

The proposed stay would remain in place until 60 days after the U.S. Senate confirms the "current nominee" as new director of the PTO. The Senate Judiciary Committee will conduct a hearing July 29 on the nomination of David J. Kappos for the position (78 PTCJ 371, 7/24/09).

The rules in question would set threshold limits of two continuation applications and one request for continued examination. They would also permit applicants to present no more than a total of five independent claims and 25 total claims, or require a filing of an examination support document by applicants who wished to exceed those limits.

In a consolidated action by an independent inventor and a drug company challenging the rules, Judge James C. Cacheris of the U.S. District Court for the Eastern District of Virginia held the rules were substantive in nature and thus beyond the PTO's rulemaking authority at 35 U.S.C. §2(b)(2), and an unlawful agency action under the Administrative Procedure Act. Tafas v. Dudas, 541 F. Supp. 2d 805, 86 USPQ2d 1623 (E.D. Va. 2008) (75 PTCJ 587, 4/4/08).

On appeal, a divided Federal Circuit panel held March 20 that the rules are not substantive in that applicants were not "effectively foreclosed from obtaining the patent rights to which they are entitled." Tafas v. Doll, 559 F.3d 1345, 90 USPQ2d 1129 (Fed. Cir. 2009) (77 PTCJ 553, 3/27/09). But the court decided July 6 to vacate that opinion and rehear the case en banc on Oct. 7, with the PTO's brief due August 5 (78 PTCJ 278, 7/10/09).

According to the parties' July 24 joint consent motion:

A stay of proceedings before the en banc court is requested to give the new Director, if confirmed, an opportunity to examine the rules at issue in this case and determine what course the USPTO should take in the future with respect to those rules, including whether to rescind the rules. Depending on how the Director decides to proceed, the legal issues currently before the en banc Court may be significantly altered or may even be rendered moot, making it unnecessary for the Court to take further action.

It is possible that Kappos may be confirmed by the Senate before legislators leave July 31 for their August recess. If that happens, and the Federal Circuit grants the requested stay in Tafas, the parties have requested a briefing schedule that would result in en banc oral arguments no earlier than December.

The motion was signed by John M. Desmarais of Kirkland & Ellis, New York, and F. Christopher Mizzo of Kirkland & Ellis, Washington, D.C., representing plaintiff Smith-KlineBeecham Corp. d/b/a GlaxoSmithKline; Steven J. Moore of Kelley Drye & Warren, Stamford, Conn., representing plaintiff Triantafyllos Tafas; and Scott R. McIntosh from the U.S. Department of Justice, Civil Division, Washington, D.C., on behalf of the PTO and its acting director John J. Doll.

Reproduced with permission from BNA's Patent, Trademark & Copyright Journal, Vol. 78, No. 1926, 7/24/2009. Copyright 2009 by The Bureau of National Affairs, Inc. (800-372-1033) http://www.bna.com