En Banc Federal Circuit To Rehear Tafas v. Doll

Tafas v. Doll (en Banc) The Federal Circuit has granted Tafas & GSK’s petition for a rehearing en banc. This case focuses on the USPTO’s power to impliment rules restricting the number of ways an applicant can claim a single invention as well as the number of continuation applications that may be filed based upon an original patent application. Appellant’s briefs are due in early August (“thirty days” from July 6, 2009) and the opposing brief will be due within twenty days of that filing. Briefs of amici curiae must follow Fed. Cir. Rule 29 – and either obtain permission of the court or permission of all parties. Briefs in support of Tafas & GSK will be due “no later than 7 days after the principal brief of the party being supported is filed.”

41 thoughts on “En Banc Federal Circuit To Rehear Tafas v. Doll

  1. Anonymous- “Just my speculation. It’ll be interesting to see how this plays out.”

    I see you don’t mention how the petitions for rehearing by Tafas or GSK may have played into the en banc grant calculus. I suspect that those petitions influenced at least some judges that the result was erroneous or that the reasoning did not satisfactorily square with precedent.

  2. breadcrumbs has some good questions.

    “what does the lack of comments on the en banc order point #2 ‘The court’s March 20, 2009 opinion, Tafas v. Doll, 559 F.3d 1345, is vacated and the appeal is reinstated.’ indicate?”

    If I understand the question correctly, the answer is that it’s normal operating procedure to vacate the panel decision when the court grants rehearing en banc, and it’s not an indicator of any leaning one way or the other on the ultimate result.

    Below are the links to Cardiac Pacemakers and Egyptian Goddess. In both orders, see point 3 after “IT IS ORDERED THAT”
    link to cafc.uscourts.gov
    link to cafc.uscourts.gov

    ——
    “Was the CAFC testing the waters? Does opening the case to additional briefs indicate that the court wants to include additional points it feels that the parties missed?

    “That the panel “beat down” is vacated does NOT necessarily indicate to me that the CAFC will reverse that panel decision, but that the CAFC will likely attempt to use different logic. This begs the question – was there something fundamentally nonsustainable with the panel decision? ”
    ——–

    Thoughts on this:

    (1) The panel majority agreed on the result, but not the reasoning. That means that the majority opinion has no precedential value except to the extent that Judge Prost and Judge Bryson agreed on something, which means that the scope of the PTO’s rulemaking is uncertain. This will be problematic for a number of reasons. (a) the result of future challenges to the PTO rules will be panel-dependent: Rader won’t feel bound by Tafas, and needs only one like-minded co-panelist to strike down a rule he doesn’t like; (b) the PTO won’t know what it can and can’t do and may be either overly timid or overly audacious in making future rules. Perhaps the court thought that, regardless of the ultimate result, it’s best to lay down some ground rules in this case that will have some value in the future. With all of the amicus participation, this is probably the best chance to do it.

    (2) I think the extra briefing is only fair. The issues are complex, and now that there’s (a) a panel opinion out there to give the public an idea of what 3 of the judges are thinking and (b) an en banc order, which means that the CAFC isn’t bound by its prior precedent, the landscape has changed enough that extra briefing might be helpful.

    Just my speculation. It’ll be interesting to see how this plays out.

  3. 6 says: “there aren’t enough old examiners to go around.”

    One reason is because they let them work at home.

    Why is the retention rate so low, 6?

    What would you do to improve it?

  4. I have already used this case in a Trademark Infringement action to argue as limiting a District Court’s injunctive to prevent an applicant from accessing the Trademark Office. Personally, I believe that the reasoning of the Federal Circuit is gravely flawed in that it aggrandizes the power of the Executive Branch to the detriment of the Judiciary.

  5. “I have no idea though why the PTO can’t or won’t hire additional examiners.”

    Curious you’ve been hanging around here long enough to know why. They can’t hire more than the thousand some that they were hiring because those new examiners need older examiners to train them and watch over their cases and there aren’t enough old examiners to go around. They won’t hire even nearly as many this year because of budget shortfalls.

  6. McBride writes: “I don’t get the USPTO’s interest in RCE and other limitations on prosecution. The USPTO gets their fees for such actions, so why should the USPTO care?”

    I think the PTO cares because when examiners are working on RCE’s they are not examining new applications and hence the backlog grows. I have no idea though why the PTO can’t or won’t hire additional examiners.

  7. silent arbiter – fine, here is my prediction, with judges listed in order of certainty:

    Affirm trial court (rules substantive/otherwise invalid): RADER, NEWMAN, MICHEL, MAYER, LINN, DYK

    Reverse/remand trial court (rules procedural/otherwise valid): BRYSON, PROST, MOORE, GAJARSA, SCHALL

    (If LOURIE sits on the en banc, I lump him with affirms. What is his deal, anyway?)

  8. Now that the term of the patent is tied to the earliest claimed priority, the USPTO shouldn’t care about continuations.

    Limiting continuatios puts a bad dynamic into place. It makes it so the examiner can drag their feet and then the attorney is going to have to appeal rather than file an RCE.

    Bad idea. We already lose patent term. That is enough. We lose patent term and money. The examiners get points. Limit continuations and we will appeal before negotiating and filing an RCE.

  9. I don’t get the USPTO’s interest in RCE and other limitations on prosecution. The USPTO gets their fees for such actions, so why should the USPTO care? Anyone? … Anyone?

  10. “The whole RCE limitation thing is ridiculous. I have competitors just waiting in the wings with god knows what prior art I haven’t been able to find. They follow the prosecution online and then send me the reference or info just at the last minute. The only way to get it considered is via RCE.”

    Poor man’s opposition FTW!

  11. Weeks ago Dennis titled a post something about the PTO having a new director — Kappos. Similarly, everyone in this thread is babbling on about what Kappos will and won’t do, and what he does and doesn’t think, as if he’s director already.

    One comment even suggested Kappos will withdraw the rules before the en banc hears the case.

    Am I missing something? Has Congress been eliminated from the appointment process? Does a director-designate have some sort of inchoate powers? Doesn’t Congress still go on recess in August?

  12. My understanding is that Kappos is strongly in favor of the Continuation limits. I would expect him to push them.

    As Mark Nowotarski posted earlier in a comment to the June 18 article on Kappos’s appointment:

    “IBM strongly supports the concept of limits on continuation applications.” link to bit.ly

  13. That the Federal Circuit granted rehearing en banc suggests these nefarious (and oxymoronic) claim-continuation limitation rules are in trouble. The interesting question is whethe the PTO will withdraw this rules package before the Federal Circuit ax falls. I doubt the PTO wants a ruling by the en banc Federal Circuit that the PTO has no authority to enact this rules package as it would also undermine their authority on the other pending rule packages on IDSs, appeals and Markush Groups.

  14. Ahem, Patent Attorney, the patent office is not pushing, its Tafas/GSK that is pushing – thankfully.

  15. Thanks anon, that is an additional reason why these proposed rules effectively limiting everyone to a single RCE, but allowing two prosecution-delaying and paperwork-increasing old-fashioned continuations, are irrational and counter-productive.
    P.S. I wonder if a complaint to the Office of Enrollment and Discipline under 37 CFR 10.85 for delaying PTO proceedings by deliberately waiting until your patent is about to issue to drop their previously known prior art on you would get any traction?

  16. WCG,

    From a post over at Patent Docs ( link to patentdocs.org )

    “There has been no indication… what Director-designate David J. Kappos thinks about the rules. (In this regard, it may be important to remember that Mr. Kappos filed an affidavit in support of the AIPLA’s amicus brief to the district court supporting the Tafas/GSK challenge to the “new rules”; see “AIPLA Supports GSK’s Lawsuit Against the Patent Office’s New Rules.”)”

    Patent Attorney – see breadcrumbs’ comment about the state of putting forth new rules if the Office pulls out now. The standing ruling is that of the District Court.

  17. The whole RCE limitation thing is ridiculous. I have competitors just waiting in the wings with god knows what prior art I haven’t been able to find. They follow the prosecution online and then send me the reference or info just at the last minute. The only way to get it considered is via RCE.

  18. Dennis. The CAFC rules have changed. Amici have 14 days to file after the principal brief that the amici supports. See rule change dated April 7, 2009.

  19. Federally Circuitous,

    Good questions. I don’t know. Have you heard or seen anything indicating that Kappos supports the rules? Was IBM a supporter of the new rules?

  20. Given the large amount of discussion and feedback generated by the panel opinion, what does the lack of comments on the en banc order point #2 “The court’s March 20, 2009 opinion, Tafas v. Doll, 559 F.3d 1345, is vacated and the appeal is reinstated.” indicate?

    Was the CAFC testing the waters? Does opening the case to additional briefs indicate that the court wants to include additional points it feels that the parties missed?

    That the panel “beat down” is vacated does NOT necessarily indicate to me that the CAFC will reverse that panel decision, but that the CAFC will likely attempt to use different logic. This begs the question – was there something fundamentally nonsustainable with the panel decision?

    If the Office does now give up the ghost, with the panel opinion vacated, would the ruling point going forward (for any new rules) revert to the last Court’s opinion (District Court)? For this reason, I suspect that the Office cannot quit now. Perhaps had they quit before the panel opinion was vacated, they could have held unto some of the power gained, but that power gain has been eliminated.

    I look forward to how the en banc words its decision.

  21. WCG, what are the odds that before the CAFC decides this case, Dave Kappos withdraws the rules package at issue? What are the odds that he proposes something else? What are the odds that this happens before the en banc panel even hears the case?

  22. the ESD’s are potential mine field of inequitable conduct charges — if the FedCir is smart, it should find a way to kill the ESD’s

  23. The new rules were substantive because they tried to enact them retroactively. If they had tried to enact them only proactively, we would probably be up to our armpits in ESDs right now.

    Dudas: “… and I’d have gotten away with it too if it weren’t for those meddling kids (glares at GSK) and that darned dog (glares at Tafas)…”
    Tafas: “RUH ROH”

  24. 6: “this is just about the office preserving its rulemaking authority, and perhaps enlargening it.”

    Yeppers, because the Federal Circuit does not want a “plague” of cases about the PTO’s rules.

  25. Dennis deserves full credit for having accurately predicted this some time ago, while others [like me] were questioning why the Court would want to engage in more internal feuding over a set of highly criticised proposed rules by a prior PTO administration that are withdrawn and probably moot? [Even more so now that we will finally have a genuine patent attorney as the PTO director.]
    Will the Court address some of the other issues the original Panel refused to decide?

  26. Np WCG the site just has some delay here lately.

    ESD’s, Rader took a rather left field position, and I wouldn’t count anyone except Newman buying it. Linn won’t. Michel won’t. Moore might based upon her previously written works but I think upon further inspection she will also not take Rader’s position. The rest are up for grabs. Toss in Bryson and Prost and Rader’s party starts off at a -2 person disadvantage.

    But, with Rader citing lines like “the “critical feature” of a procedural, non-subtantive rule is that “it covers agency actions that do not themselves alter the rights or interests of parties, although it may later the manner in which the parties present themselves or their viewpoints to the agency” (which is precisely what the new rules attempts to do) to supposedly support his position by reciting the following “the issue is therefore one of degree … our task is to identify which substantive effects are sufficiently grave” he’s not likely to gain much support from his fellows. The rules are blatantly not “sufficiently grave” if the CAFC has confidence in its own ability to judge IC due to issues with ESD’s.

    I believe if the attorney had spent some time discussing with Rader about how he certainly must have confidence in his and his fellows ability to apply the law to IC situations then perhaps he would have been more persuaded since his main issue (so far as “substantiveness” of the rules goe) appears to be with the insufficiency of the ESD “way out”.

    He might also have gone a step further and asked Rader how a burden is being shifted when this is an entirely different type of burden than those addressed in the prior cases and which are currently in existence.

    I also find it rather hilarious how, in Rader’s dissent, he says on the one hand that whether or not a rule is substantive or procedural under the APA notice and comment guidelines is completely irrelevant to this case, and then goes on to try to use that same guideline to determine it as being a substantive rule later.

    Always a good listen:

    link to oralarguments.cafc.uscourts.gov

    The DC wants the rules dead either way so they’ll end up dead. Now this is just about the office preserving its rulemaking authority, and perhaps enlargening it.

  27. Hey ESDs: how about a prediction of how each judge comes out?

    Also, I noticed Lourie didn’t participate in the poll. Does this indicate he won’t be part of the en banc court? Or he just was out of the office? TJ?

  28. I predict affirmance of the trial court (reversing the panel decision, if it weren’t already vacated) by a bare majority of the court. I further (boldly) predict that the Bryson concurrence will not be adopted/endorsed by any judge on the court (including Bryson himself).

    PS, Dennis – In light of what I perceive as a drop in commenter quality here, I’m thinking that commenter registration, or at least some ability to delete/edit your own comment after posting, is becoming increasingly necessary (if not difficult to implement).

  29. WCG. was’t the first decision not by En Banc already? Was this En banc before? Wait a minute here.

  30. Why would the full court wish to hear this again? Do they expect the judge’s respective opinions to change? Do they expect less of a splintered en banc court? What rationale is there for the full court to rehear this case again?

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