On Monday, July 6, 2009, the United States Court of Appeals for the Federal Circuit (minus Judge Lourie who did not participate in the poll of judges) decided to rehear the claims and continuations rule challenge of Tafas and GlaxoSmithKline en banc. Additionally, the CAFC has vacated the panel decision that awarded a victory to the USPTO. The date of oral arguments in front of the entire Federal Circuit is as yet to be determined.
The CAFC will hear the case sitting as one based on the briefs already submitted, but is providing a limited opportunity for additional briefs. The Appellant’s additional brief is due within 30 days, followed by a 20 day period within which the Appellee may then file a subsequent brief, followed by a 7 day period within which the Appellant may file a reply. Additional briefs are limited to 7,000 and any reply brief limited to 3,500 words.
What follows is the text of the Federal Circuit Order.
SMITHKLINE BEECHAM CORPORATION (doing business as GlaxoSmithKline),
SMITHKLINE BEECHAM PLC, and
GLAXO GROUP LIMITED (doing business as GlaxoSmithKline),
JOHN J. DOLL, Acting Under Secretary of Commerce for Intellectual Property
and Acting Director of the United States Patent and Trademark Office,
and UNITED STATES PATENT AND TRADEMARK OFFICE,
Appeal from the United States District Court for the Eastern District of Virginia in consolidated case nos. 1:07-CV-846 and 1:07-CV-1008, Senior Judge James C. Cacheris.
Before MICHEL, Chief Judge, NEWMAN, MAYER, RADER, SCHALL, BRYSON, GAJARSA, LINN, DYK, PROST, and MOORE, Circuit Judges.?
O R D E R
A combined petition for panel rehearing and rehearing en banc was filed by the Appellees, and a response thereto was invited by the court and filed by the Appellants. The court granted motions for leave to file briefs as amici curiae.
The petition for rehearing was referred to the panel that heard the appeal, and thereafter the petition for rehearing en banc, response, and the amici curiae briefs were referred to the circuit judges who are authorized to request a poll whether to rehear the appeal en banc. A poll was requested, taken, and the court has decided that the appeal is appropriate for en banc consideration.
Upon consideration thereof,
IT IS ORDERED THAT:
(1) The petition for rehearing en banc is granted.
(2)The court’s March 20, 2009 opinion, Tafas v. Doll, 559 F.3d 1345, is vacated and the appeal is reinstated.
(3)This appeal will be heard en banc on the basis of the briefs already on file and additional briefs discussing the issues addressed in the panel opinions. An original and thirty copies of all briefs shall be filed, and two copies served on opposing counsel. The parties shall file thirty copies of the original briefs within thirty days from the date of filing of this order. The Appellants shall file their additional brief within thirty days from the date of filing of this order. The Appellees’ additional briefs are due within twenty days from the date of service of the Appellants’ brief. The Appellants’ additional reply brief, if any, is due within seven days from the date of service of the second Appellees’ brief. Appellants shall file thirty copies of the joint appendix within seven days of filing their reply briefs. Additional briefs shall contain no more than 7,000 words and any additional reply brief no more than 3,500 words, and shall otherwise adhere to the type-volume limitations set forth in Federal Rule of Appellate Procedure 32 and Federal Circuit Rule 32.
(4) Briefs of amici curiae will be entertained in accordance with Federal Rules of Appellate Procedure 29 and Federal Circuit Rule 29.
(5) Scheduling of oral argument will be resolved at a later date.
Dated: July 6, 2009
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5 comments so far.
World’s Greatest InventorJuly 8, 2009 09:29 pm
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patent leatherJuly 7, 2009 06:19 pm
The previous opinion was very significant in that it ruled that RCEs can be limited. While some may say that you could just file a continuation in place of an RCE, the USPTO has discretion as to when they pick up a continuation for examination (e.g., they could put them at the end of the queue, requiring the applicant to wait another 3 years) thus effectively killing RCE practice which is what Doll wanted to do in the first place. I can’t imagine any other USPTO administration would be crazy enough to try to limit RCEs (especially now with the huge backlog at the Board), but nothing the USPTO does would surprise me anymore.
However, the en banc panel may address a bombshell– that 35 U.S.C. 120 really only provides for 2 serial continuations. See the Bryson dissent and read 120 carefully. Judge Michel once said publicly he thought continuation practice was harmful (I don’t remember his exact words) and I worry that the CAFC could set the stage for the USPTO to reenact a modified form of the rules, this time with a hard 2 application limit on serial continuations but with no limit on parallel continuations. This is probably unlikely, and would invalidate some issued patents that are more than 2 serial continuations deep.
(Gene, if you mistype in the captcha code and have to hit the back button on your browser, the poster loses his entire post! Not sure if there’s anything you can do).
Gene QuinnJuly 7, 2009 01:43 pm
I have to think that this means either that the CAFC is going to agree with Cacheris or that the PTO is going to get a total victory. I cannot imagine a total victory, so I think you are right. These rules are in big trouble!
If only the PTO had done the reasonable thing and withdraw the rules like I suggested and start over they would have been able to stand on a ruling saying that even substantive changes to the Patent Act are merely procedural. If they lose it will be one of the most dumb things government attorneys have ever done. The panel gave the PTO everything they could have wanted and then a little more!
YoavJuly 7, 2009 10:31 am
Although I am a new comer to this blog, a question if I may.
I wonder in regard to gene patents in vieew of recent developments.
EGJuly 7, 2009 10:10 am
This grant of rehearing en banc by the Federal Circuit suggests these nefarious (and oxymoronic) claim-continuation limitation rules are in trouble. The interesting question is whether the PTO will ask to pull this rules package before the Federal Circuit ax falls. I doubt the PTO wants a ruling on the merits by the en banc Federal Circuit that says they don’t have the authority to enact this rules package as it would certainly undermine their authority on the other pending appeals, Markush group, and IDS rule packages.