Tafas v. Dudas Concludes: CAFC Must Choose Whether to Vacate District Court’s Precedent

The USPTO has announced that it is rescinding the continuation rules package being litigated in Tafas v. Dudas. GSK has reportedly agreed to request that the Federal Circuit dismiss their appeal and to vacate the district court decision below.  According to his attorney, Tafas has not agreed to seek vacatur of the district court opinion and instead believes that the district court’s precedential decision should be to maintained in order to limit the USPTO’s substantive rulemaking power.

79 thoughts on “Tafas v. Dudas Concludes: CAFC Must Choose Whether to Vacate District Court’s Precedent

  1. 79

    every time I have used the preappeal conference, always after a few RCE’s, the rejections have been withdrawn and new rejections over new art issued.

  2. 78

    We also found, collectively as a firm, that the preappeal conference was a fantastic thing. We only used it when we were very confident that the examiner was off-track; and we’ve had about a 90% success rate (defined as getting at least one of the incorrect rejections overturned). Far quicker and more useful than filing yet another RCE.

    Broje: that makes sense, that the examiners would appear to “misunderstand” the claims, in order to make it easier to reject. I have scratched my head many times trying to figure out how on earth the Examiner can think the rejections possibly apply to the claim at issue.

  3. 76

    I agree that severely misinterpreting the claim language in order to read on something ridiculous and easily rejected without doing a prior art search was a lack of serious attention. It’s really cheating applicants when Examiner’s do that.

    On the other hand, I suspect that any Examiner who actually tried to do a good job under the pressure to reject and the limited time to examine, quickly found it impossible. The best an Examiner can do is search the art and allow the claim if a limitation is not found in the references. But when you have SPEs telling their Examiners that “There’s nothing new in this art area,” and “It’s all out there and I expect you to find it,” then abuse is sure to follow.

    The easiest way to meet that impossible burden was to misconstrue the claim language in an unreasonable way, as it allowed the Examiner to avoid having to search at all. So that is what we have been seeing.

    An Examiner recently told me that we would do the same thing if we were in their shoes. I’d dearly like to believe otherwise, but I can’t realistically disagree.

    Fortunately, as I stated recently, I am seeing some better searches recently. Also, Exmainers have been willing to back off of some rejections during interviews when I demonstrate that they overlooked something. In the past, that wasn’t the case. They would just dig their heels in and tell me to appeal it.

  4. 75


    Quite the opposite, re: “One might say in defence of the USPTO that it was merely giving its responsibilities the proper level of serious attention?”

    There has been a lack of serious attention from the Office. A wanton disregard for its duties to examine applications with a “reject-reject-reject” mantra does NOT equal serious attention to meet the Presumption of Validity. Likewise, as I have pointed out, a mantra of “accept-accept-accept” is not acceptable. The Office has a management problem, as opposed to a philosophy problem (the previous administration had both). It is NOT easy to examine applications so that they properly meet the Presumption doctrine. I never said it was. However, and this is important – it is the Law to do so. The Law requires such an examination. It is our system (the US – so keep that in mind in your reply).

    I understand you have an issue with that doctrine of presumption. However, you are conflating again. Please be mindful of this.

  5. 74

    Well, this is really good news Fry. Thanks for your posting. I had grasped that domestic applicants were also being abused by the USPTO, and it’s nice to read that some sense is emerging, at long last.

    Maybe one problem is the Presumption of Validity, which imposes extra responsibility on the USPTO, not to let any crap through to issue. No other Patent Office in the world carries that onerous burden of responsibility. One might say in defence of the USPTO that it was merely giving its responsibilities the proper level of serious attention?

  6. 73

    Max, relating to your comment, a European client truly thought that the reason why his U.S. application (key to his portfolio) had been through the rejection mill for years–because he wasn’t an American company. No, I said, Americans are getting this treatment too. I did just secure an allowance for that case, and as a firm we’ve had more allowances in the past month than in the preceding year. Deserved allowances, for claims that were clearly patentable.

    Go Kappos!

  7. 72

    I think Examiners will be treating GSK apps just like anybody else’s. Doesn’t everybody? Why should they do otherwise. Isn’t it even more work, an extra step, to sort apps into “GSK” and “not-GSK” categories?

    It’s like some Americans think that the outcome of an EPO opposition filed by a German company to a US-owned Euro-patent will depend on whether or not the responsible Primary Examiner (with one vote out of three) is (on the one hand) a Frenchman, a Swede, an Italian or a Brit or (on the other hand) a Kraut. A bit sad really.

  8. 71

    I am so glad I never studied the new rules like all you suckers did. Ha ha ha. Once again, I crossed my fingers and made the right decision.

  9. 70

    Good contribution Ken. Made me laugh. You write:

    “I hope that he is not collecting ideas…”

    but, me, I hope he IS collecting ideas. Mine anyway. They at least are worth it.

    And I hope he’s passing them on too. To anybody whose attention he can secure.

  10. 69

    I just looked at all of my materials on the new rules: notes, training materials, diagrams, charts, summaries for the clients. What a waste. A worthless patent is still fancy wallpaper. This stuff, not so much.

    Can anyone suggest the best way to convey our thanks to GSK? Is their GC tired of receiving flowers?

    After this public spectacle, how do you think examiners will be treating GSK’s apps? With fear or animosity?

  11. 68

    Yes, I think that the censorship is incredible. Even remotely logical and non-controversial discussions are omitted from this blog. I hope that he is not collecting ideas and passing them off as his own.

  12. 67

    As I had said on this blog several months ago, the Tafas decision is probably the most important decision concerning Executive Agency power in 50 years. It substantially curtailed Congress’ ability to operate. The U.S. Congress has a basic operating principle (CBOP): Do not advance any legislative act that would hinder its members in seeking re-election. Executive agencies play a key role in the CBOP. Specifically, to implement the CBOP Congress has four options. Legislation that that impacts the power structure of our culture, i.e., state governments, large corporations, large financial interests, the military and the like, is almost entirely handled by executive agencies. I refer to this as the executive option, or XO, for hugs and kisses. As a result, such as the instant rules packages, the animus towards legislation implemented using the XO option is borne by the executive branch. Guess what, if an executive agency does something that the power structure does not approve of, Congress is immune from political repercussions. A good example of this one is the military’s don’t ask don’t tell policy. Could you imagine the fear of Congress if they had to deal with that issue? No, it’s the President and you know what, he is elected by the power structure (electoral college) not the people (VOTES-see below).

    Now legislation that the public cares greatly about and poses a significant threat to the power structure one would think presents a tricky situation Congress, because it pits the only two classes of political capital against one another: VOTES versus MONEY. If Congress acts one way or the other, they could get voted out by the people (VOTES) or removed from office by (MONEY), which is used to sway votes. There is a tried and true operation that allows Congress to deal with this situation almost effortlessly. It depends upon the great disparity between the knowledge-base of the parties that wield these two classes of political capital. The operation I call the Boot It to The Bench Operation. BITBO is implemented by passage of legislation that will appease the public and which will ultimately be rejected by SCOTUS as being inimical to the Constitution. This is what will happen with health care. After all where in the Constitution does Congress have the power to make me pay for anything, other than taxes. This works well, because the MONEY knows full well that this will happen and the VOTES think they had their prayers answered. However, after three to eight Congressional sessions, the legislation is struck down and the VOTES blame the courts: who by the way can’t be voted out of office; so, it doesn’t matter. The Congress, well the one’s who did it have moved on to other constituents to ensure they get re-elected.

    The third operational mode is what I refer to as Contrived Controversy Legislation (CCL). CCL generates enormous amounts of lobbying money by the interests that may be impacted by the legislation. CCL main goal is to generate a great deal of money. Therefore, it is never really intended to pass into law. At best one could hope for is a spin-off LOL, discussed more fully below. Without CCL there is really any incentive for a member of Congress to be there. They could make more money running another business. The best example of this is the patent legislation that is before Congress-more about this below. Another example was gun legislation. Until, of course weapons possession by the general public was made critical after the Mogadishu incident as memorialized in the story Black Hawk Down. Once the western power structure realized that a rag tag group of uneducated and untrained individuals with poor weapons could decimate the best trained troops on the planet they moved quickly to end weapons possession by their populace. The first act was in Australia. Then gun control legislation came to the U.S. This upset the VOTES greatly and see, we had our first Republican Congress since the 1950s. By the way it didn’t work in Australia, either, they are slowly getting their weapons back, because the crime wave has been more than the government can handle.

    Returning to the patent legislation, this is almost the perfect storm. The VOTEs don’t care and the MONEY, well they are divided (pharmaceutical industry versus electronics industry). This is what a member of Congress lives for. The lobbying money flowing into Congress over this CCL makes banking class green with envy.

    The fourth operational mode is what I refer to as limited operation legislation (LOL). Let’s take the new hate crime legislation that incorporates sexual orientation as a protected class. Does this impact the power structure?-No. Does it impact most U.S. citizens-No. How many people do you know that would violate the act. I don’t know any. Does it temper the over all debate about equality in our Constitutional Republic-No. So the PAC money will continue to flow in. Can Congress tout it as an example that they are working in someone’s interest to make the U.S. better. You betcha.

    Now with the forgoing in mind, I ask, why could the rules package be pulled? Would it impact CCL? I don’t think so, because Congress can always change the way an executive agency operates. Could it be that the patent legislation will pass? As a result, it could be that the courts did not want to waste court resources on a topic that will be moot and substantially affect the impact on other executive agencies. I think this is where the answer lies. Although this will end a key piece of CCL for Congress there are considerations that must be entertained which will benefit Congress if the patent legislation ends being CCL. Firstly, business is hurting and the patent legislation could be implemented that would save billions of dollars to both industries with respect to infringement actions. In short, Congress can act to spur investment and growth in the only viable industry of the U.S. Only innovation will get us out of this mess. Remember, the VHS machines of the 1970s that helped the economy . . . the military buildup in the 1980s drove the economy then and then the PC drove the economy in the 1990s. High technology will get us out of this mess, as well. Secondly, the new Director is very well aware of the needs of the electronics industry; therefore, if the rule making power of the USPTO is maintained to be pre-Tafas, whatever negative impact from the patent legislation has on the electronics industry can be tempered by the rule making power of the USPTO. This is why the electronics industry would end its opposition to the patent legislation. Now why would GSK and the pharmaceutical industry end its opposition to the patent legislation? Well that is where the tire hits the road. I would love to know what, if any deal was struck. You GSk already had a big chip to cash-in in the game in light of the Tafas decision. I wonder if all the adds about the need to get vaccinated and the possibility of pharmaceutical immunity might have anything to do with their cashing it in? Maybe GSK got a great deal of say in the health care legislation. After all, that legislation will greatly impact GSK. Only time will tell as to how GSK played its chip.

  13. 66

    Dear Sarah,
    Unfortunately I am not Dennis – I am subject to the same level of censorship as you. Believe me, I have many stories to tell, too, but you know how this system works.

    In any event, the real date on your post that I quoted was May 11, 2009. link to patentlyo.com

  14. 65

    s.m.: you’re making my creepy meter jump off the scale.

    On topic; hope that Tafas sticks to his guns until all the bad guys get run out of DC (Dodge City).

  15. 62

    Hey BIGGIE are you trying to get me to say something I will be sorry for later… My story is on hold and you know why…………SO SORRY BIG GUY
    And by the way you have stopped many of my comments… Why is that? Do you care to explainn why I couldn’t comment before and now I can? And just who did you send My comments too when you received them? Seems fishy BIG GUY.And I see you have saved this one. You’re so special
    Signed Guppy

  16. 61

    “…MY POINT.”

    You go, girl. But last time you were here, you promised a story:

    “Dearest Dennis,
    Can I tell a story in some blogs that will soon be showcased on Facebook with real Documents and Evidence. And I would like to tell 6, that if a new Director is brought in “NEW” being the operative word. Maybe things will change because 6 speaks the truth. And maybe then He will get promoted. I plan to also write a book. But that plan will be decided in Sept. as to the way it will be written. Fiction or non.
    As usual you will not print this. But I am used to the altering of my blogs and also ignored blogs.
    Guppy with sharp teeth”

    Please update us.

  17. 60

    I read this blog quite often. And there has been a lot of blaming going on. A lot of it true. But he has absolutely nothing to do with the earlier and current mess. I wasn’t directing the message at you.
    And by the way everything that has gone on in the last few years has been relevant to Dudas and his associates, and whoever gave him the go ahead… MY POINT.

  18. 59

    “2) the attorney time spent parsing through pending applications to see if there was unclaimed matter that needed additional claims.”


  19. 58

    Thank you, Ms. McPherson, for your contribution. At first, I didn’t see how your comments were relevant to Tafas v. Dudas. But then I read them again. Now I see quite clearly how they have absolutely nothing whatsoever to do with Tafas v. Dudas.

  20. 57

    Well then if you can’t go to work that day… Then it is sure a big prominent law firm would disss you… Or is the lacky the only one that follows case law and does any work… and the rest of you eat lunch that the client pays for.
    And by the way, the world should take a breath and realize that the big O is dealing with attitude from the world… Not just his own country.. Give Him a stepup. And every day he still remains a classy non judgemental man. Lets see any of you do that. He earns his place in not only the nobel line. But his rightful place in History. I would like any other leader black or otherwise to have as much class besides Mandella or Sadat. And they ain’t even oh my gosh need I say it WHITE!
    Give peace a chance. Forget where you came from. Know at least where you are trying to go.
    Elephant droppings

  21. 56

    On whether to vacate the district court opinion, I’m confident that the opinion would not be binding precedent in any other case (no district court decision is). Res judicata and collateral estoppel are a little more complicated. I seem to recall that third party assertions of collateral estoppel against the government are usually not allowed. I’m not sure about that, and I’m not ambitious enough today to research it.

  22. 55

    Just a general observation from personal experience with several commissioners and directors: While one assumes that commissioners appointed by Democrats would be looking out for the interests of the little guy and the commissioners appointed by the Republicans would be more interested in appeasing major corporations, the stereotypes do not hold true. Some of the Democrat commissioners have been very solicitous of industry; but the opposite seems true of some Republican appointees. The Dudas rules are one good example. Contrast Dudas to Dickinson. Dickinson, while not forgetting the little guy at all, was very “user” friendly, which generally meant more patents with less resistance for the big guys.

    Now, the opening shot of Kappos of IBM. His initial actions seem “user” friendly, which generally favors the big users such as IBM. He will also, I believe, support the pending patent legislation which is also generally favored by the big corporations.

    The funny thing is, though, real patent problems for big corporations stem from poorly examined patents. When these issue to big corporations who license patents by portfolio, little harm is done. But poor quality patents issued to the little guy can sometimes come back to bite the big guys hard. (They also bite the little guy, but in a different way. They raise false expectations on just how valuable their patent really is.)

    I assume that Kappos knows this and will do something to increase quality or to assure that it does not decrease. But time will tell.

  23. 54

    “Clearly here, the circumstance is NOT unattributable.”

    They could simply say they don’t have the $$$ to continue with the implementation of the rules due to the happenstance of the recession and accompanying lack of fees.

    I’ll tell you though Noise you know there’s a backroom deal at work between K and GSK. That’s where the “upside” is coming from.

  24. 53

    Abandoning the en banc will not result in restating the panel opinion. The en banc would have to affirmatively choose to reinstate the panel opinion. The Office rescission forecloses this option.

    “Who’s to say?” – no one – there is no case or controversy left for the en banc to proceed, other than to direct the District Court for vacatur or not.

    The 1950 Munsigwear line (340 U.S. 36) distinguishes as the dismissal was related to a two part count and res judicata was the point at hand, and talks to a judgment from a first count reaching a second count on hold at the time of mootness. Further, this only establishes the move of vacatur to preserve the right to re-litigate (and exactly what Tafas does NOT want to happen).

    In the 1994 Bancorp Mort. (513 U.S. 18), dealing with bankruptcy proceedings, the court denied motion to vacate. In that case, vacatur was sought to overcome a voluntary move earlier in the proceedings. While the fact pattern distinguishes, the court’s reasoning is interesting.


    “The parties in the present case agree that vacatur must be decreed for those judgments whose review is, in the words of Munsingwear, “‘prevented through happenstance'” — that is to say, where a controversy presented for review has “become moot due to circumstances unattributable to any of the parties.”

    Clearly here, the circumstance is NOT unattributable. The Office in making a voluntary decision to rescind the rules and does not have a right to vacatur.

    It is curious as to why GSK would agree to this move, as there appears no reasonable (that precludes comments from 6) upside for them from vacatur.

  25. 52

    Courts don’t vacate opinions because parties feel like it would be nice. Mootness, whether from settlement or otherwise, is hardly a rock-solid basis for vacatur. See the Munsingwear line of cases. There is confusing Supreme Court caselaw and there is a lot of discretion. The district court opinion is tricky enough; who’s to say that the en banc Federal Circuit won’t abandon the en banc and reinstate the panel opinion?

  26. 50

    Patent Leather: “The total cost of the rules and all of their direct and indirect effects is probably > $100,000,000.”

    Good points on estimated costs. This shows that the rules were “Economically significant” rules under Executive Order 12,866 even without taking effect!

  27. 49

    @ David Boundy,

    Great post. You left out:

    1) the money the USPTO spent to develop their computer systems to handle the new rules (likely a few million)
    2) the attorney time spent parsing through pending applications to see if there was unclaimed matter that needed additional claims. If there were 1,000,000 pending applications, and on average, $75 (probably a low estimate) of attorney time was spent on each application, that’s $75,000,000!

    The total cost of the rules and all of their direct and indirect effects is probably > $100,000,000.

    Thanks, Mr. Doll (big pat on back)

  28. 48

    Same Day,

    I’m curious about your statement “…establish the law of the case for the parties litigating the case”

    Since the USPTO was a party litigating the case,…

    …are you saying the reasoning applied at the District Court level (the only reasoning left since the decision to hear en banc nullified the CAFC opinion) creates a limit on administrative power ONLY for the Office (and not for example the EPA)?

    …that vacatur is appropriate to remove the District Court reasoning from the record – as if it never happened? (and thus free the case law affected party), or do you think that the case law affected party is still affected even after vacatur?

  29. 46

    time the public spent trying to figure out the rules and how to modify their practices in view thereof and still best represent their clients

  30. 45

    They establish the law of the case for the parties actually litigating the case, but they don’t bind any court on the legal question involved if that question comes up in another case.

  31. 44

    When you add up

    – what the PTO spent developing and publicizing the rules

    – what the public spent writing notice and comment letters

    – what the public spent filing continuations on Halloween Eve 2007 and old-rule appeals during first week of December 2008

    – what parties spent on the OMB challenges

    – what Tafas, GSK, and the Amici spent on the litigation

    – what other litigants lost while the courts were tied up deciding a case that had already been killed by OMB months earlier

    – lost productivity for folks listening to PTO’s web cast in late October 2007 when the PTO confirmed everyone’s worst fears about how gratuitously onerous these rules really really were

    – what PTO will have to spend over the next year or two to regain the credibility it had with the public in order to return to the relatively productive and harmonious relationship of the late 1990’s

    – and what is now being spent to unwind from all of the false alarms

    I’d estimate Jim Toupin, John Doll, John Love, John Whealan, Jon Dudas and Joe Rolla have between 10 and 50 million dollars of explaining to do.

    Of course that’s nothing but informed guess. On the other hand, OMB believed the informed guesses that my team put together more than it believed PTO’s uninformed guesses.

  32. 41

    Znutar: “Neither funny nor offensive, just a waste.”

    So sorry you didn’t enjoy my satire, but they can’t all be comedy gems.

    How about this one?

    Q: How do you tell the difference between a real Texan and a hillbilly?

    A: The hillbilly won’t cry on the stand.

  33. 39

    Malcolm, do you ever type a response, read it, and then decide it would probably be best not to post it? The right to free expression is not a mandate. For someone that endlessly pounds the table about crap patents clogging up the system, you seem to completely fail to see the irony of your crap postings clogging up the message board. Mind you, I find that you do at times post intelligently, and 5% of the time I even agree with you. But you last post, like so many, was just plain vapid. Neither funny nor offensive, just a waste.

  34. 38

    6 “terms like hillbilly are recently gaining recognition as being the same type of term. And they are.”

    Yes, soon the ‘Beverly Hillbillies’ will be banned from TV, just like they banned ‘Two Nxggers, A Girl, and a Pizza Place.’

  35. 37

    “If you did any “mackin'” at all (which is highly doubtful) it was only with the stoopid hos.”

    Jealousy does not become you.

    But yes, I sometimes prey upon the weak 🙂

    “The list goes on. It seems that society took a hiatus for 30 years or so while nobody asked any questions, and nobody challenged anything.”

    Actually it is more like 80. And they didn’t bother to challenge many lawls either sadly. But, we have to remember, many lawls/regulations were enacted in a different time when they perhaps made a lot more sense. Life wasn’t as easy as it is nowadays you know?

    “Better communication and dissemination, making their actions more visible? Better procedures and organizations for opposition, making opposition functionally easier?”

    All of the above at least.

    “but then someone reminded me that there are an awful lot of C- animal husbandry majors from Hillbilly U taking it.”

    And a lot of C- engineering majors from BigName U taking it as well. Stu pid comes in more shapes and sizes than hillbillies. One of my best buds (god bless his heart and I just love him anyway) knows that he’s in this category.

    “some friendly advice is to become sensitive to the racial slurs you make. ”

    Ur preachin to the choir.

    Some friendly advice to Broje and everyone else in the people in the world, terms like hillbilly are recently gaining recognition as being the same type of term. And they are.

    Nationality. Look it up.

    “You would not want to sit in an interview in New York before an attorney and try to explain why I wrote a comment on a blog that included the N word. Nightmare.”

    I’m glad you’re taking responsibility for the comment 🙂 You shouldn’t have used my moniker, bad boy!

  36. 35

    Does anybody else find it strange that some of the big questions relating to government functioning are just beginning to be seriously asked at this time?

    Limits on agency rulemaking authority? Pretty huge issue–why is it not better defined after 200+ years?

    Limits on executive authority? Same thing.

    Limits on extraterritorial application of US policy? Same thing.

    Limits on governmental regulation of the financial services industry? Same thing.

    The list goes on. It seems that society took a hiatus for 30 years or so while nobody asked any questions, and nobody challenged anything.

    Is it because governments are taking increasingly greater liberties, making their actions more likely to inspire opposition? Better communication and dissemination, making their actions more visible? Better procedures and organizations for opposition, making opposition functionally easier?

    I’d like to hear people’s views. It is still amazing to me that we’re sitting around waiting for some meaningful guidance on 101, 103, 112 FUNDAMENTAL issues. I mean the bedrock stuff of patent law, not to mention administrative law and constitutional law.

  37. 34

    Interesting isn’t it….
    Obama got peace price, continuation rules got recinded. Poor Bush + Dudas.

    BTW, anyone knows what happends to Dudas.

  38. 33


    I wonder if that partner’s definition is ubiquitous–I got basically the exact same one!

    (not the same person, but a patent department head in a large general practice firm instead)

    I will agree that law school does not have to be difficult–but if you put a lot of work in, it can be exceedingly so.

    Unfortunately, a lot of work doesn’t necessarily occasion more success through better grades, etc.. I remember reading EVERYTHING that was handed out in the first semester, to nearly NOTHING that was handed out in my last. I found other, better sources for the same, and more, information.

    Of course, that is all ancient history, when the web and online databases were nascent. If I were to re-attend today, I probably wouldn’t read ANYTHING they handed out.

  39. 32

    >>if they tested inadvertent humor…

    6, some friendly advice is to become sensitive to the racial slurs you make. They hurt some people and you need to learn not to make them.

    With that said, you might also want to know that making such remarks could be grounds to reject you from law school and/or state bar associations.

    You would not want to sit in an interview in New York before an attorney and try to explain why I wrote a comment on a blog that included the N word. Nightmare. Virginia would probably be even harher.

  40. 31

    “And the LSAT isn’t even nearly as ornerous a requirement as I thought it would be. My reading comp boosts me significantly at the outset :)”

    Good thing they don’t test writing. On the other hand, if they tested inadvertent humor…

  41. 30

    I didn’t want to go to the office today, but I did – guess I’m one of the good guys…

    On another note, the new PTO website is live and looks pretty good. I wonder if IBM got the contract…

  42. 29

    “And the LSAT isn’t even nearly as ornerous a requirement as I thought it would be. My reading comp boosts me significantly at the outset :)”

    Ya. I thought I did well to score in the top 3% on the LSAT, but then someone reminded me that there are an awful lot of C- animal husbandry majors from Hillbilly U taking it.

    That said, getting into lawl school is actually the hard part. Just wait until you discover what an unbelievable cakewalk lawl school is.

    But then, practicing law day in day out is where the fairy tale ends. I remember on my first day at the big top 10 patent law firm, the 6 million dollar a year partner gathered all the noobs together and told us that his definition of a good patent attorney is one that gets up and goes to work on the day when he or she would rather be doing anything else. I thought he was wacky at first, but then the shine wore off the penny. Words of wisdom indeed.

  43. 28

    Max, the short answer is no. Noise is absolutely right about one thing – these administrative law issues don’t translate very well, primarily because of the constitutional separation of powers. The arguments about “procedural” versus “substantive” are not of the “how many angels fit on the head of a pin” variety.

    The PTO over-reached with the rule-making, and was corrected, at least partially, by the District Court. The PTO wants that correction to be off the record, which takes us back to the status quo before the rules were attempted. That’s a smart move by the PTO – we all know that there are limits on their authority; with the Tafas decision vaacated we will have a bit less official guidance as to the precise limits.

    Fortunately (in my opinion), the USPTO is now part of an administration that, while it likes the administrative state (for better or worse), has a high regard for the rule of law and the authority of Congress. I think it’s unlikely that the PTO will try anything this ambitious for a while, without explicit authority of Congress.

  44. 27

    “I spend the day in ur lawlschools mackin’ your womenz…”

    Is this part of the prison release program 6?

    mmmmm mmmmm mmmmm

    If you did any “mackin'” at all (which is highly doubtful) it was only with the stoopid hos. You know, the ones that don’t know that atoms don’t fall out of wires…

  45. 26

    “And a complete “thumbs down” on ever granting the PTO substantive rulemaking authority!”

    LOL Wut?

    “Hope you enjoyed your “lolz”. Attorney kings ascend back to the throne, and Examiners relegated back to serf status.”

    I’m still loling.

    Kappos may be a wuss, but he’s a wuss with a plan, and you aren’t going to like that plan any better than the dudas plan. Does it really matter if you *can* file an additional RCE but the client won’t pay the vast sum of money for it? Be clear, that’s the plan.

    “Back to work – your workload has increased for less credit, so you better get some more counts (before Kappos reduces them again).”

    It hasn’t really gone lower, he’s simply insisting to pay me back over the course of a year or a little more and then start giving more credit if we go with the new package. If it actually “goes lower” I’ll simply take a few years off working. I rather like ur lawlschools and ur womenz therein. And the LSAT isn’t even nearly as ornerous a requirement as I thought it would be. My reading comp boosts me significantly at the outset 🙂


    I don’t think it hinges on Tafas, it hinges on whether or not the CAFC decides to allow GSK’s motion or petition or whatever. If the DC ruling is gone for the one it’s gone for the other.

  46. 25

    Brilliant comment about the only ones who know what disclosure lies in published patents are the USPTO Examiners. The whole point of any patent system is to disseminate useful info to the persons of ordinary skill in the art, to stimulate their design around creativity. At least in Europe, industry follows the content of emerging WO and A publications, to learn and to avoid infringement. But I know that the dysfunctional US patent system deters innovative manufacturing industry from maintaining watching searches and I suppose that has something to do with Night’s assessment.

    As to rule-making authority, doesn’t the USA have something corresponding to Europe’s Principle of Subsidiarity (empower by pushing decision-making down to the lowest level competent to do it)?

  47. 24

    NWPA, correct! That was part of my five point plan to fix the office. I discussed this with the Du_das guy and he threw the plan in the trash and ratcheted up the ill-fated eyeballin’ program. Classification, expertise, efficiency (low actions per disposal), and respect. There was another major point, but I have forgotten it.

    Instead, they are hiring some Foley attorney from Chicago with no prosecution experience, and she will be working from Chicago! lolz indeed.

  48. 23

    “Attorney kings ascend back to the throne…”

    You really have an over-inflated sense of your position in the world.

  49. 22

    >>If anything, NAL’s too soft. patent nightmare >>over is delusional.

    What worries me is that the Office seems to have turned upside down the entire notion of the Office being the expert in fields of patentability. An examiner should know their area and the Office should know how to categorize applications and route them to examiners who know a particular area. The examiner should know the references and should understand the application easily based on spending their time in a small area.

    The attorney should not be presumed to be the expert. We cannot possible be experts in all the areas we practice. Additionally, the inventors often know little about what art is out, so they often cannot help the attorney. This is not always true and sometimes the inventors do know the art pretty well.

    But, this notion that we should be the experts for the art that is relevant to an invention is simply flipping on its head the way it should be.

  50. 21

    6 – to quote you when I said (obviously true now) the “golden age of patent prosecution was starting”


    Hope you enjoyed your “lolz”. Attorney kings ascend back to the throne, and Examiners relegated back to serf status.

    Back to work – your workload has increased for less credit, so you better get some more counts (before Kappos reduces them again).


  51. 20

    If anything, NAL’s too soft. patent nightmare over is delusional. Admin power impact too small? you’re delusional as well. If Tafas also drops, then the entire power struggle slate is wiped clean and the Office WILL try again, and the entire exercise of those trying to keep bureaucrats in check will be wasted. The efforts of Boundy, Katznelson and others for nothing. STAY STRONG TAFAS!

  52. 19

    Max, I think curious’s post was very clever, notwithstanding Noise’s even-more-condescending-than-usual post. I also think it’s technically true that these events “impact” administrative agencies “across the spectrum of US politics”, but that the impact is pretty small. Things tend to get a little distorted when we patent nerds look out from inside the fishbowl of patent prosecution: 6’s juvenile, misogynistic ramblings are mistaken for office policy; perceived reductions in the strength of patents are greeted as harbingers of the end of innovation and civilization as we know it; and so on.

    Personally, I doubt that Congress will cede substantive rule-making authority to the PTO. I’d like to hear some thoughts (not rants, please) from our libertarian-minded friends on the constitutionality of such a move. Just how much law-making power can Congress delegate?

  53. 18

    Good riddance. Tafas, GSK, David Boundy, Richard Belzer, and Ron Katznelson are to be commended for resisting this monstrous abuse of authority by the prior PTO hiearchy. What collossal waste time and money for all involved. And a complete “thumbs down” on ever granting the PTO substantive rulemaking authority!

    Also, as someone has pointed out, the prior Federal Circuit panel decision was vacated by the grant of the request for an en banc hearing. That means the district court opinion is currently the only one still standing.

  54. 17

    Noise, thanks. I had been thinking that Congress could give rule-making authority to Mr Kappos, while continuing to reserve unto itself absolute rule-making authority over every other admin body. I had supposed that Kappos would not even have asked, on behalf of his little fiefdom, if his ask had been that big an ask, with such momentous consequences and ramifications and repercussions.

    How big an ask is his ask, I’m now wondering.

  55. 16


    My view is that Congress will not relinquish the money hold on power – but money isn’t the only currency in politics, and I do not have visibility into what transpires behind closed doors (do you think that there aren’t deals being made?).

    I don’t think curious was being michievous – his posts don’t usually carry that much depth or criticality. This rescinding and vacatur impacts not only the PTO but administrative bodies across the spectrum of US politics. I’m not sure that translates across the pond.

  56. 15

    Noise, tell me how “Congress” reacts to a letter from Mr Kappos that asks it to empower the PTO by delegating rule-making power to it. Does it think “Delighted, old boy. Glad to get rid of that particular pesky duty” or does it think “First, what’s in it for me?”. Does it just put the letter in the “Too Difficult” file or does it instantly do what Mr Kappos asks?

    And don’t you think Curious was just being mischievous, rather than serious?

  57. 14


    only this chapter – why would the Office give up now, unless other more effective paths are in sight?

    Look at the letter to Congress. If substantive rule-making power is granted, the Office will be empowered to make whatever rules they want – including similar or more draconian than those in the now defunct package – and their would be absolutely NO recourse in the courts.

    This ain’t over – put away the champaigne.

  58. 12

    Mr. Brooks, I don’t think the CAFC could hear the case even if it wants to do so, assuming the PTO rescinds the rules. There would be no case or controversy at that point, hence no Article III jurisdiction.

  59. 11

    Hold on there. More is at stake than patents. I have heard rumors that the EPA is thinking of implementing Cap-and-Trade vis-a-vis its rule making power. No, the Federal Circuit must hear this case. We must determine the limits of executive agency rule making powers. Afterall, they are prima facie unconstitution organs of the government. Their existence is tolerated for the sake of efficiency.

  60. 9

    “just as a panel decision in the Fed Cir is binding on the whole court”

    Yes, technically speaking.

  61. 8

    Ah yes. Judge Posner potificating, but point taken. But the res judicata point–at least for factual findings–is not irrelevant. You have a district court judgment based on certain factual findings. It’s quite likely that another (or the same) district court will apply issue or claim preclusion based on the first district court decision.

    As to Dr. D’s point about the Prost and Bryson opinions, I was not accurate. The posture of the case is interesting, however. Would/could the Federal Circuit reinstate the original panel opinion since the parties are dismissing their rehearing petition?

  62. 7

    I’m going to stick with my view. What I have in mind, in asserting that a district court decision is not binding precedent anywhere (including in the self-same district), are discussions like the following from a recent 7th Circuit case. – Midlock v. Apple Vacations West, Inc., 406 F.3d 453, 457-58 (7th Cir. 2005): “But as we have noted repeatedly, a district court decision does not have stare decisis effect; it is not a precedent. It may be a wise, well-reasoned decision that persuades by the quality of its reasoning, but in that respect it is no different from a persuasive article or treatise. The fact of such a decision is not a reason for following it. This conclusion is based not on a disrespect for district judges, but on the sheer unmanageability of a system in which the authority to lay down legal rules is dispersed across a multitude of independent courts. There are 65 federal district judges in this circuit alone. They sit by themselves rather than in panels. If the decisions of each of these judges have the force of precedent, how is a lawyer to advise his clients? Often the different judges will render inconsistent decisions, and it may be years before the conflict is ironed out by an appellate decision.”

  63. 6

    Mr. Marshall’s statement is partially incorrect. The Prost and Bryson opinions have already been vacated by the Federal Circuit so the only thing left standing is the district court ruling once the appeal is dropped.

    Res judicata and law of the case are irrelevant. The district court opinion will be persuasive — not binding — in any future litigation over the scope of the USPTO’s power under Section 2 of the Patent Act. Also, the fact that the case was decided in the EDVA will undoubtedly amplify the effect of the ruling because the EDVA is a likely forum for any future rule challenges.

    Tip of hat to Dr. Tafas and GSK.

  64. 5


    I believe you’re mistaken on certain things. The district court decision is obviously binding precedent in EDVA (just as a panel decision in the Fed Cir is binding on the whole court).

    Furthermore, the PTO will be highly influenced by the district court’s decision. Indeed, the agency is bound by the district court’s decision.

    Beyond the precedential aspect, one must consider the res judicata effect of the decision on Tafas, GSK, PTO, and future parties possibly litigating the same or similar issues.

    I think it’s foolish for Tafas to want the opinion to stand. The Prost and Bryson opinions are far more deferential to PTO rulemaking than many realize.

  65. 4

    District court opinions aren’t precedential. They establish the law of the case for the parties actually litigating the case, but they don’t bind any court on the legal question involved if that question comes up in another case. (Vacatur of lower court opinions when a matter settles on appeal is routine. But whether vacated or not, the trial court’s decision in the case doesn’t bind any other court … not even the trial judge who wrote the decision!)

  66. 2

    Well ain’t that some bullsht.

    I spend the day in ur lawlschools mackin’ your womenz and I come back to this? OUTRAGEOUS!

    Still, I suppose the glass is half full for the office at this point.

    “How much did GSK get for this move?”

    They probably brokered the deal themselves and got nothing.

    Kappos has a lot of confidence in his changes going into effect and practically accomplishing what the rules were meant to do by implementing them and raising fees here shortly is the word I’ve been hearing.

    Yet, every examiner I’ve talked to in person (around 25) has been either already against the package or was persuaded to be against the package by me.

    Never the less, he may have enough airhead drones to get it passed.

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