Tafas v. Dudas: Discovery and Scheduling

Tafas v. Dudas, 07–cv-0846 (E.D.Va 2007)

As is well known in the patent prosecution community, Tafas and SmithKline Beecham (GSK) filed suit against the USPTO — asking the Federal Courts to block implementation of a new set of rules that would limit the number of claims and continuation applications that can be filed based on a single original patent application.  The Eastern District of Virginia District Court has issued a preliminary injunction (PI) that temporarily blocks implementation of the new rules. Now, the Patent Office is fighting to change the outcome in the final decision.

The PTO has now submitted its answer to the complaints filed Tafas. In its answer, the PTO presents three defenses:

  • The rules were promulgated in accordance with appropriate rules (and the US Constitution) and comply with the Patent Act;
  • Plaintiff (Tafas) has waived all objections that he did not make during the rulemaking process; and
  • Plaintiff (Tafas) lacks standing on many of the asserted counts.

As is usual, the answer did not develop any factual background for these particular defenses.

Discovery and Scheduling: During the PI Hearing, the PTO argued for an extended period for filing Summary Judgment motions. At that time, the Tafas attorney indicated that the schedule should go much more quickly.  Of course, now that the rules have been stayed the parties have flipped their positions. The PTO wants a quick decision and Tafas is content to allow the proceeding to drag-on a bit longer.

From the PTO Scheduling Brief:

“In order to halt Tafas and GSK’s stalling efforts, clarify that no discovery is permitted, and allow the Court reach the merits expeditiously so that the Final Rules are not preliminarily enjoined longer than necessary, Defendants Jon Dudas and the USPTO (collectively “the USPTO”) respectfully request that the Court enter an Order clarifying that a standard scheduling order will not issue in these consolidated cases because the cases may promptly be decided on cross-motions for summary judgment without discovery.”

The PTO would have all summary judgment briefs filed prior to the Christmas Holiday. The next hearing is scheduled for November 16, 2007.

Before deciding the scheduling, the district court will need to determine whether to allow any discover. The plaintiffs — Tafas & GSK — are asking for discovery (including depositions of PTO leaders). The defendants — PTO & Dudas — argue that no discovery is necessary.

There is usually very little discovery when a court reviews administrative rules — rather, the new rules usually stand or fall based on the administrative record. Of particular interest in this case are public (and private) statements by PTO officials regarding the purpose and likely effect of the rule package — especially because some of those statements speak to purposes and effects not found in the ‘official’ reasoning published by the Office.  Tafas adds that its Constitutional claims (apart from its APA claims) deserve discovery.

Files:

USPTO.2007.11.answer.Tafas.pdf
USPTO.2007.11.09.memorandum.scheduli.pdf
Tafas.1007.11.memo.schedule.pdf
GSK.2001.11.memorandum.schedule.pdf

26 thoughts on “Tafas v. Dudas: Discovery and Scheduling

  1. “Where in the APA does it say that one has to raise issues in the Notice and Comment period in order to be able to seek judicial review of a rule?”

    In the same place where it says that 35 U.S.C. 120 does not permit an applicant to have more than two continuations as a matter of right.

    I can’t wait until 2009… assuming the current uspto leaders haven’t done irreparable damage to the patent system by then.

  2. Where in the APA does it say that one has to raise issues in the Notice and Comment period in order to be able to seek judicial review of a rule? Section 702 says that anyone suffering legal wrong has standing to seek judicial review.

    With regard to the 5/25 rule these were not even in the proposed rules put up for comment.

  3. Am I in some alternate parallel universe? I don’t ever really recall the USPTO caring about the patent bar.

    My suspicion is that there’s a cadre of bureaucrats at the office who know just enough about patent law to lull themselves into a false sense of hubris and that there’s really not a lot of thinking (or knowledge) about the impact on business/innovation. Is there someone at soliciter’s office who’s actually practiced patent law in the trenches?

  4. “This is getting silly. Let’s get back to our business,”

    Abe,

    We are close to being put out of business. I’m ready to sell used cars or buy a McDonalds franchise.

  5. “if there are no restrictions on continuations, you’ll just have to file more applications to get those 300 claims you want…therefore, a 25/5 claim limitation is not preventing you from claiming your invention”

    Once again, you are urged to review 35 USC 41(c)(A) and (B), and particularly the latter sub-section. While it is a section pertaining to required fees, it does shed significant light on the ability of the USPTO to impose limitations on the number of claims presented in an application. Using sub-section (B) as an example, one must ask the question if the USPTO has the authority to limit the number of independent claims presented in an application? Note the explicit reference in the sub-section to both independent and dependent claims.

    Section 41 is, to the best of my recollection, the only portion of Title 35 that deals with claim numbers, per se. It does not impose any limitations on the number of claims that can be presented in an application. In fact, the only limitation it imposes is that fees are increased when certain numbers of independent claims and total claims are exceeded.

    Congress having apparently decided that the only limitation concerning the number of claims presented is the reqirement to pay additional fees, how is it that the USPTO can via rulemaking decide to limit the number of claims in an application that contradicts what is implicit in Section 41? The section does not suggest in the slightest that the USPTO has the authority to impose additional requirements.

    Granted, an EDS requirement could be argued as not being inconsistent with Section 41; however, its implementation as proposed presents two problematic courses of action. One can either stay within a limit as the USPTO seems adamant about implementing, or one can exceed the number and then run the substantial risks imposed by what comprises an EDS and how it must be presented.

    It is helpful to always keep in mind that the original concept of IDS submittal was an aproved mechanism from which certain presumptions would flow to the benefit of an applicant and counsel in observing their duty of candor before the USPTO. A search of the prior art has never been to my knowledge a mandatory part of the process. To now try and institutionalize such a document, whether denominated an IDS or an EDS, imposes a substantive requirement that finds no basis in governing law defining what an application must by law comprise. Congress has by legislation decreed the substantive requirements for a patent application. It has not, however, vested in the USPTO the authority to add to those requirements.

    It would be nice if this was an issue that could be addressed with reference to a specific statutory provision. Unfortunately, one must weave together the sum and substance of several provisions in order to effectively demonstrate that the USPTO is intent on pursuing a course that conflicts with these several positions when considered as a whole.

    This is truly a time when one must stand back for a moment and get the “lay of the land” before forming any definite opinions on what the USPTO is entitled by law to do. To do otherwise raises the real possibility that important issues will be overlooked.

  6. If you look back, real anonymous, the Bar and the political appointees in the past, like Lehman and Rogan are often on the same page of bashing the examiners . No one of them speak of improving high quality by giving more time to the examiners. Often, when testify in front of Congress, the political appointees would promise to do more for the Bar . Only when Rogan putting in quality initiatives and purged many old time examiners then they realized that you can’t get quality dependencies without experience . Rogan even go as far as destroying the Classification Unit as part of his reform leaving the patent classification in a chaotic system as now.

    If you look at the new OPM study, prior to this study, the PTO often asserted that the examiners are often leave the PTO because of the personal reasons. Only recently, after this OPM, Dudas, feeling he has no political future, issue a short statement of reconsidering the recommendations of OPM study .

    The new class of examiners just started their job, and already, a lot of them left. Imaging the demand of the job as they go higher . Of course some of them will stay , but not the good examiners. All that left are the examiners with no “communication skills”, i.e., with little English .

  7. Anonymous, I hear you, but the bar had nothing to do with the “second pair of eyes”, “third pair of eyes”, etc. Those were USPTO-born programs that management came up with because they couldn’t see their way clear to fixing the underlying problem (e.g. better training and more time for examiners).

    Believe me, the bar (including myself) hates getting allowable subject matter indicated, only to have rejections (or allowance) completely changed in the next go-round because the case went off the examiner’s desk to some anonymous desk where the extra “eyes” looking at the case didn’t understand the issues but came up with a rejection anyway.

    What you need is better management that understands examination.

    And P.S. the patent bar does want quality (not perfect quality) from examiners (is that wrong? I’m sure examiners want better quality from lawyers too), but management is clueless as to what direction to move the corps (or the bar) to achieve it. Former examiners (myself included) never left the Office because of the bar – but they have often left because of management.

  8. “The devastation comes from the Quality Initiative allowing each Director forming Quality Review Unit made up of SPEs under the TC, then “second pair of eyes” initiative, and some even go with “third pair of eyes”

    The fact that the USPTO’s answer to quality is to institute more inspections (e.g. second pair of eyes) shows that there is a fundamental misunderstanding of quality. I worked for 20 years in the manufacturing industry and if there is one thing we learned, it is that quality comes from adhering to processes so that tasks are done right the first time. This minimizes errors and increases efficiency, not inspections after the fact

  9. “totally ignored constructive comments by the Patent Bar in promulgating the new rules”

    I found this statement is supremely ironic . This fiasco happened because of the Patent Bar and patent lawyers crying foul and wanting reform the USPTO in the 1990s . They want the USPTO to clamp down on the examiners, increase dependency, and high quality . Eventually, they got what they wanted, most of the old examiners left because of initiatives stemming from the demands from the Bar and the lawyers . The devastation comes from the Quality Initiative allowing each Director forming Quality Review Unit made up of SPEs under the TC, then “second pair of eyes” initiative, and some even go with “third pair of eyes” and I have seen the whole art unit left because of these policies . Imagine if you are doing your job and you have a bunch of people looking at your every move. A lot of cases, the Tech centers spend more times looking at a claim than the examiner (the examiner look at a lot of claims while second pair only focusing on 1 claim). Basically, you can’t allow case any longer . Adding to the fuel, the PTO has a history of promoting sadistic SPEs who rather enjoy seeing their fellow examiners suffer (hey, this is how they get to be SPE because of the long hours needed for high production quotas, unofficially 130-140 percent to become SPE) .

    In the end, the Bar and the lawyers got what they wanted , the old examiners are almost gone. Like the old say, be careful what you wish for.

  10. anon e. mouse-

    if there are no restrictions on continuations, you’ll just have to file more applications to get those 300 claims you want…therefore, a 25/5 claim limitation is not preventing you from claiming your invention

  11. You are totally incorrect on the USPTO’s ability to limit claims. 35 USC section 102 states that any one who files a patent application gets a patent, unless the provisions of 35 USC section 102 are violated as modified by 35 USC 103. It doesn’t say, oh yeah, and there are no more than X number of claims. While the USPTO can regulate procedural aspects of filing of applications, it cannot refuse to issue a patent application as a U.S. patent unless the provisions of the statutes are violated.

  12. The Patent Bar could be a very helpful source for the PTO. There should not be a war. The war exists because the PTO operated in bad faith, and almost totally ignored constructive comments by the Patent Bar in promulgating the new rules. This is especially ironic, because the patent community wants the USPTO to function more smoothly and efficiently. The ESD, an obviously inoperable requirement, is an example of bad faith, proposed as an option, when it is not. Either bad faith or stark incompetance. My suggestion would be to change course and engage in real “give and take” with the IP community. There is a lot of good advice out here, beyond the walls of the Arlington fortress.

  13. “As much as we, practitioners would like to, we can’t stop the PTO from placing limitations on the number of claims that can be filed in a single case”

    Perhaps Section 41 may help shed some light on just what the USPTO can and cannot do concerning claim number restrictions.

  14. I expect and can easily live with the new rules ABSENT the continuation/RCE limit.

    I would rather simply have a fee structure that limits the number of claims or continuations/RCEs economically, not through intricate rule making.

    The USPTO is in face saving mode now. It is a shame.

  15. I’m sure Tuffy is confused because the Title of this thread mentions Tafas and not GSK and yet links are provided to GSK filings. Tuffy may not know that there are two suits that are interrelated and have been combined and that the filed papers and our discussions meander back and forth.

  16. Moreover, unless you have some sort of “patentably indistinct” provision (as did the new rules), limit on claims is meaningless as far as burden to the PTO.

    There’s no real difference in burden on the PTO whether you file 10 applications on the same day with 5 claims each or 1 application with 50 claims.

  17. Abe wrote:

    “As much as we, practitioners would like to, we can’t stop the PTO from placing limitations on the number of claims that can be filed in a single case.”

    Are you serious? Is this just true for 5/25? What about 3/20? Or 2/10? 1/5? Or just 1/1? Is that still legal, and if not, why not?

    I think 101 and 112 make it pretty clear the inventor is entitled to claim her invention no matter how many claims it takes, and is free to write all her claims in independent form.

    “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

    A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form.”

  18. Abe, I don’t mean to be offensive, but “[l]et’s get back to our business, PTO and practitioners working together” is another name for “regulatory capture.”

    The fact that the PTO and the patent bar are at war is not necessarily a bad thing. After all, would we want the IRS and the tax bar to have the same views on what the law should be? Or the SEC and the Securities plaintiff/defense bar (pick a side); or the FTC and the antitrust plaintiff/defense bar; or the NLRB and one of labor/management?

    For far too long, the PTO has treated patent owners and the patent bar as its “customers,” to the exclusion of the non-patent owning remainder of the society and the public at large. Sure, you had the occasional rejection of a particular patent, but the agency and the bar had fundamentally the same world view–a pro-patent-owner one. More patents meant more prestige and more money for the PTO. The fact that a realignment is producing screams of murder by the patent bar is not surprising, whether the screaming is a bad thing is much more debatable.

  19. This is getting silly. Let’s get back to our business, PTO and practitioners working together, instead of fighting battles no one can win completely. As much as the PTO would like the final rules to go into effect, they cannot limit the number of continuations that can be filed without violating 35 USC 120. As much as we, practitioners would like to, we can’t stop the PTO from placing limitations on the number of claims that can be filed in a single case. Plan for the future: no limit on continuations or RCE’s (RCE’s are just a simplified version of a continuation case), 25/5 limit on claims in a single case. Oh, yes, no retroactivity, new rules would only apply to applications actually filed on or after the effective date of the new rules (after Court decision, not 11/1/07).

  20. “Of particular interest in this case are public (and private) statements by PTO officials regarding the purpose and likely effect of the rule package — especially because some of those statements speak to purposes and effects not found in the ‘official’ reasoning published by the Office”

    this seems to imply that at least some discovery from PTO officials is needed, doesn’t it?

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