Reply briefs filed in claim and continuation rules case; administration opposes patent reformFebruary 4, 2008

Late Friday, the parties filed their reply briefs in the cases challenging the USPTO's claim and continuation rules. As with the parties' opposition filings, these briefs largely represent another repetition of the arguments raised in the parties motions for summary judgment. The motions have now been fully briefed, and the hearing on the parties' motions is scheduled for Friday, February 8 at 10:00 EST.

In addition to news on this front, the Bush administration has sent a letter to Senator Leahy regarding the Patent Reform Act of 2007 (S. 1145). While the administration supports several sections of the bill in principle, the administration does not support the bill as currently drafted, largely because of the damages apportionment portion (which has also been the most controversial). Based on this position, it seems unlikely that the Patent Reform Act of 2007 will become law in its current form, as it would be unlikely there would be sufficient votes for a veto override. As a result, look for the damages apportionment provision in the bill to be either substantially changed or scrapped during negotiations on a compromise version of the bill. Update (2/5): The final version of the Senate Judiciary Committee's report on S. 1145 can be found here. Notably, this version includes "other" and minority views of committee members, and that section in particular is worth a look. HT: Patently-O via Patent Prospector.

Click below for links to the summary judgment filings in the lawsuits challenging the USPTO's claim and continuation rules, including the newly-filed reply briefs.

Parties' motions for summary judgment

• USPTO
  • Motion for summary judgment against Tafas
  • Motion for summary judgment against GSK
  • Brief in support of both motions
  • USPTO opposition to GSK's motion for summary judgment, Exhibit 1
  • USPTO opposition to Tafas' motion for summary judgment, Exhibit 1 (part 1, 2, 3)
  • USPTO motion to strike, brief in support
  • USPTO reply brief, Exhibits 1, 2
• Tafas
  • Motion for summary judgment
  • Brief in support
  • Tafas opposition to USPTO's motion for summary judgment
  • Tafas reply brief, Exhibits 1, 2, 3, 4, 5, 6
• GSK
  • Motion for summary judgment
  • Brief in support
  • GSK opposition to USPTO's motion for summary judgment, Exhibit 27
  • GSK reply brief [link fixed]

Filings relating to amici

• Supporting plaintiffs
  • American Intellectual Property Law Association (brief)
  • Biotechnology Greenhouse Corporation of Southeastern Pennsylvania, Life Sciences Greenhouse of Central Pennsylvania, and Pittsburgh Life Sciences Greenhouse (motion for leave, brief)
  • Biotechnology Industry Organization (brief)
  • Cantor Fitzgerald Patent Holdings, LLC (motion for leave)
  • CropLife America (motion for leave, brief)
  • Patent, Trademark, and Copyright Section of the Bar Association of the District of Columbia (motion for leave, brief)
  • Elan Pharmaceuticals (brief)
  • Fédération Internationale Des Conseils En Propriété Industrielle (motion for leave, brief)
  • Human Genome Sciences (motion for leave, brief)
  • Intellectual Property Owners Association (motion for leave, brief)
  • Dr. Ron D. Katznelson (motion for leave, brief)
  • Monsanto (brief)
  • PhRMA (brief)
  • Polestar Capital Associates, LLC and The Norseman Group LLC (brief)
  • Teles AG (motion for leave, brief)
  • Valspar Corporation, General Mills, Inc., Donaldson Company, Inc., Ecolab Inc., and Anchor Wall Systems, Inc. (motion for leave, brief)
  • Washington Legal Foundation (motion for leave, brief)
  • Intellectual Property Institute of William Mitchell College of Law (brief)
• Supporting defendants
  • ← Return to Filewrapper