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.