Federal Circuit holds oral arguments in claim and continuation limit rules caseDecember 9, 2008

On Friday, the Federal Circuit heard oral argument in the consolidated cases challenging the USPTO's new claim and continuation limit rules. You can download the audio of the arguments here. While it is, of course, too early to tell whether the Federal Circuit will affirm the permanent injunction against implementation of the rules, the tenor of the oral argument seems to indicate the court was skeptical of the USPTO's arguments. The panel that heard the case comprised Judges Rader, Bryson, and Prost.

Click below for a few highlights and links to other coverage of the arguments.

Perhaps the most telling portion of the argument came during the questioning of the USPTO's attorney beginning at approximately the 13:30 mark. Below is our rough, unofficial transcript of the exchange between Judge Rader and James Toupin, general counsel of the USPTO who argued on behalf of the USPTO:

JUDGE RADER: Wouldn't you be crazy to use [the ESD] procedure, and subject yourself to inequitable conduct if you make the slightly…a slightly wrong comma, in the wrong place?MR. TOUPIN: To the contrary, your honor, the first..JUDGE RADER: The contrary, you're going to go out and advise your clients that, uh, to use the ESD procedure routinely?MR. TOUPIN: If, if, if, the application calls for…JUDGE RADER: You're advising a pharma company now, and you've got clinical trials underway, and you know you're going to need to, down the road not only make, uh, additional…you're going to identify your species that are the best ones, you're going to need continuations to, uh, to cover your real invention, you're going to need more claims, because you're not only claiming the species with their various formulations and the administration methods, you know the particularity of this, and you're going to say, "well, it's OK, we can go beyond the 5, and we can go beyond the continuation limit because, ah, we can clarify it all with ESDs?"MR. TOUPIN: Look, first, we can…JUDGE RADER: That's the advice you're going to give your clients?MR. TOUPIN: Your honor, because…JUDGE RADER: Yes is your answer?MR. TOUPIN: Yes. The argument that is made…JUDGE RADER: I bet you're not going to be hired by very many pharmaceutical companies. [Laughter]JUDGE RADER: I think you've just sent yourself to the electronics industry.[Laughter]

Judge Rader accurately sums up the thoughts of most practitioners on the rules: they represent a Hobson's choice (or perhaps more accurately a Morton's fork) for clients: either potentially forego valuable patent protection on your invention, or submit yourself to the onerous ESD procedure, leaving yourself open to almost certain claims of inequitable conduct if the patent ever has to be enforced.

Based on this (and other) exchanges between the panel and the attorneys, it at least seems as though the court was skeptical that the USPTO had the authority to promulgate the rules. There is no timetable for a decision to be released, but most expect it will be several months.

Other blogs covering the arguments:

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