On Friday, Judge Cacheris heard oral arguments from Tafas, GSK and the USPTO on three motions for summary judgment regarding. As was expected, the blog coverage was fast and furious, but ultimately, Judge Cacheris decided to take the matter "under advisement," agreeing to issue an opinion at a later date, noting that "there is a lot of paper to consider" (see the court's minute entry here).
(1) Everyone had their "A" game: The court, and all appearing parties, were well-prepared and meant business. The PTO (represented by Lauren Wetzler and Steve Walsh) was more polished in contrast to the preliminary injunction arguments. Judge Cacheris shot off multiple pointed questions that left both sides playing catch-up through parts of the proceeding.
(2) It's "all or nothing": neither side is proposing "carve-outs" for specific sections of the continuation rule changes. The entire rule will stand or fall as a result of the litigation.
(3) What is the PTO's rule making authority? A good portion of the arguments centered around the PTO's rule making authority, governed by 35 U.S.C. § 2(b)(2), stating the the Office "may establish regulations, not inconsistent with law, which-
(A) shall govern the conduct of proceedings in the Office; [and?/or?]
(B) shall be made in accordance with section 553 of title 5 [of the Administrative Procedure Act (APA)]."
The plaintiffs submitted that section 2(b)(2) required that both requirements had to be met in order for the continuation rules to be effective. As the PTO did not follow the provisions of section 553 (notice/comment), Plaintiffs argued that the rules were void. The PTO countered that the Office had authority from Congress to enact the continuation rules as presented, without having to meet every requirement of the APA.
(4) Are the PTO Rules "substantive"? The remainder of the arguments surrounded the issue of whether or not the PTO's continuation rules were "substantive" as opposed to "procedural." Tafas/GSK argued that, since the rules were substantive in nature (i.e., changed the manner in which patentable subject matter could be claimed), the PTO inherently lacked authority to implement the rules.The PTO responded that the rules were reasonable "procedural" restrictions that would aid the PTO in curbing the avalanche of [continuation?] applications at the PTO. Nevertheless, the PTO appeared to concede that substantive rules could not be applied retroactively, adding that changes to the FRCP have been routinely applied to pending litigation without any trouble.
From Around the Horn:
See John White's play-by-play coverage of the oral arguments at the PLI Blog (link1) (link2).
Listen to John's audio report here (link), as well as Bob Spar's audio report (link).
Read Jill Browning's detailed report at Patently-O (link).
More from Patent Hawk (link) and Patent Baristas (link).
See the current docket report from Justia here (link)