Summary of today’s summary judgment hearing in the claim and continuation rule casesFebruary 8, 2008

As we reported earlier, Judge Cacheris took the parties' motions for summary judgment under advisement in the consolidated cases challenging the USPTO's claim and continuation rules. Below is a summary of the hearing from our representative who was in attendance.

Tafas and GSK butted heads with the USPTO again today in front of a packed courtroom in the Eastern District of Virginia. Interested onlookers sat through Judge Cacheris's criminal docket so that they would have a seat for the arguments. Another civil litigant there for motion day told the Judge "I'll try to be brief so you can get to the case everyone is here to see."John Desmarais of Kirkland & Ellis (on behalf of GSK) had the opening salvo at the hearing, deriding the rules as a "sweeping change" that departed from 100 years of law. GSK seized on language from Animal Legal Def. Fund v. Quigg ("ALDF") that defined a rule as substantive when it "'effects a change in existing law or policy' which 'affect[s] individual rights and obligations.' 932 F.2d 920, 927 (Fed. Cir. 1991) (citations omitted). Desmariais took the language from ALDF and walked the court through Rules 75, 78, 114 and 265, showing how it would change "existing law or policy." Notable from this portion of the arguments was Judge Cacheris's query as to what he should do if he agreed the rules were "substantive." Desmarais was quick to reply that the rules could be vacated and the Judge need not reach any of the other issues (a tempting path of least resistance). James Nealon of Kelley Drye & Warren – his thunder somewhat stolen – stood up on behalf of Dr. Tafas and basically had a big "ditto" to the points Desmarais had made. Not looking to beat a dead horse, Nealon used his time to make the arguments related to the Regulatory Flexibility Act and various evidentiary issues, including the Polestar brief. Notable here was an apparent misunderstanding between Nealon and the Judge. The Judge queried what showing is necessary under the new Rule 78 for applicants to get another continuation. Nealon, perhaps hearing differently, discussed the ESD requirement of rule 265. Assistant U.S. Attorney Lauren Wetzler handled the bulk of the arguments for the PTO. Wetzler opened by characterizing the case as a government agency (in a world of bad government agencies) trying to do something about inefficiency (i.e. "trying to do good"). Wetzler drove home the language of the enabling act found in the statute (35 U.S.C. § 2), pointing out that processing applications is the essential proceeding of the Patent Office (and thus presumably within the gambit of 35 U.S.C. § 2(b)(2)(A)). Desmarais's hammering on the ALDF case did not go unanswered, with Wetzler saying not so fast, ALDF was about whether notice and comment was even required for a particular statement of PTO policy. Interestingly, in a different part of her argument, Wetzler likened multiple continuation practice to a party making repeated motions before a court. Wetzler ceded the lectern to Acting PTO Solicitor Stephen Walsh who discussed the rules in light of the relevant statutory provisions, arguing how they were consistent. Generally speaking, the arguments tracked the briefs. Judge Cacheris was attentive and asked some, but not many questions. With the exception of the question related to the showing under Rule 78, the questions were largely open ended (probably to move the parties along when he had heard enough). The Judge did ask a series of questions to all attorneys related to what relief was appropriate should he find the rules substantive, the FRA/APA procedure deficient, etc. Each party had a rebuttal with Wetzler drawing the short straw, having to finish up in 3 minutes. The Judge probably best summarized things when he told the parties he would take the case under advisement, asking "for some time to go through all the paper." Lots of paper and lots of issues indeed! This correspondent finds it hard to read the tea leaves, but the Judge's reading of the ALDF case and 35 U.S.C. § 2 (to state the obvious) will figure in greatly. The attorneys for their part were good, and the preceding summary reflects notes made during the hearing – by no means an exhaustive summary of the arguments made. A fellow spectator remarked that the attorneys performed much better than at the preliminary injunction hearing. Is this the final chapter? Unlikely: as John Desmarais said in his rebuttal (although in a different context), "this case is going to the Federal Circuit."

Patently-O provides this report on the hearing, and the PLI Patent Law Blog provides this report.

Update (2/11): The AIPLA provides this report on the hearing.

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