Dr. Tafas Files Declaratory Judgment Action to Block Implementation of Continuation Rules

Dr. Tafas invented a high throughput diagnostic microscope sold through his company, Ikonisys. He also has a patent pending on a method for improving automotive efficiency. Tafas protects these inventions through patents and has now sued the USPTO. Tafas asks the E.D. Virginia District Court for a declaration that the PTO’s newly finalized rules are in conflict with the Patent Act and are thus invalid.

Commentary: Tafas will likely lose here. On its face, the rule may operate within the laws because it allows Tafas to file his continuations if he has good reason to do so. The law certainly does not require the PTO to examine clearly repetative or bad-faith continuation filings. If applied lightly, the new rules would simply block those “bad” continuation filings and the good ones will pass through.  The better case will be raised by an applicant who is denied a continuation filing despite having a “good” reason for the additional filing.

Files:

• File Attachment: TAFAS_Complaint.pdf (707 KB)
• File Attachment: TAF.PI.pdf (1570 KB)

Press Release from Kelley Drye, his attorneys:

Washington, DC, August 22 – Within a day of the United States Patent and Trademark Office (“USPTO”) publishing its final rule changes in respect to continuation practices, the USPTO and its Director, Jon Dudas, have been sued in the U.S. District Court for the Eastern District of Virginia by Tafas, an independent inventor. Tafas, represented by the law firm of Kelley Drye & Warren LLP, is seeking a declaratory judgment that the new continuation rules are null and void, and is seeking a preliminary and permanent injunction prohibiting the USPTO from putting the new rules changes into effect.

The complaint, and memorandum of law in support for the motion for preliminary injunction assert that the USPTO exceeded its Congressionally-delegated rulemaking authority and that the new rule changes specifically violate Section 120, 132, and 365 of the Patent Act. It is further asserted that USPTO failed to comply with the Administrative Procedure Act in promulgating the new rule changes. The suit also alleges that the USPTO has engaged in retroactive rulemaking and has failed to consider USPTO-induced reasons for multiple continuation filings.

Furthermore, Constitutional impediments to the new rule changes are raised. It is asserted that the USPTO did not comply with Article I, Section 8, of the United States Constitution by failing to adequately determine the effect of its rulemaking on the promotion of the “progress of science and the useful arts.” It is also asserted that the USPTO’s rule changes violate the taking clause of the Fifth Amendment.

Kelley Drye Partners William Golden, Steven J. Moore, James E. Nealon and Senior Associates Joseph Wilson and James Moriarty are representing independent inventor Tafas.

Comments

[Mr. T]

Malcolm is not unlike a lot of lawyers I know. When I was downtown that day - our office was somewhat near the White House - we had to evacuate. Before leaving, everyone with a heart was very upset, myself included, and concerned about another plane supposedly still airborn (that one, I guess, was United 93). On the way home, I wanted to enlist and/or blow some small country off the face of the map. I calmed down, being much too old for the army and not knowing who the hell was responsible, but I'll never forget the partners carrying on like nothing happened as we left the building!

[Malcolm Mooney]

I watched the towers fall in Paris, where it seemed likely at the time that we would be next. The point is that if insane idiots want to make you miserable, there are a million unstoppable ways for them to do so. It's not worth sacrificing the US Constitution to prevent lunatic bombers from engaging in their lunacy. Of course, the greatest exploiters of this notion are not Muslim fanatics but Christian fanatics. Ask Planned Parenthood to explain it to you if you don't understand.

Now, rather than soiling ourselves or, as certain lowlife media pundits have put it, going around and telling Arabs in the Middle East to "suck on" the business end of the US military, a sober person capable of rational thought might suggest that a good long term solution to the problem of insane idiots is, to the extent possible, preventing their population from growing.

That requires asking a tough question: what makes people become insane idiots. The answers are obvious and closely related: poverty, religion and war.

So let's refresh ourselves. In 2004, the US population allowed itself to be convinced that John Kerry was a child-killing military criminal who wasn't fit to lead our great country. It therefore re-elected a fundie president who believed that what America needed was to start a long war in a poor country to dethrone a dictator who opposed Muslim fanatics.

At the same time, the same administration supports the tanking of public education and leaves the teaching of fundamentalist anti-science religious garbage like "intelligent design" "up to the States."

Okay, then. The stink is pretty bad.

So this time around we surely won't see candidates for President making bizarre claims about how crucial it is that the leader of the United States worship some kind of deity. Right? And we won't see the annointed journalisming elites asking candidates whether they believe that "prayer" is "effective". Right?

Of course not. Because America doesn't want to continue it's slow downward spiral. Right?

[Mr. T]

I certainly hope so Malcolm. I dislike these people in charge probably more than you. They are far, far from conservative! They are radicals. And I agree, religion should have no place in any party.

[real anonymous]

[Begin religious statement: please skip if offended by any such statements]

"It's not worth sacrificing the US Constitution to prevent lunatic bombers from engaging in their lunacy. Of course, the greatest exploiters of this notion are not Muslim fanatics but Christian fanatics."

Touché . I fear religious tyrants much more than political ones. Perhaps that is why the founding fathers denied to the government the right to make laws of religious consequence.

Regarding fanatics, however, there is one very significant difference between "Muslim fanatics" and "Christian fanatics" that I hope doesn't escape your attention.

The Muslim fanatics are the ones that know and obey the Koran, for example:

[3.151] We will cast terror into the hearts of those who disbelieve, because they set up with Allah that for which He has sent down no authority, and their abode is the fire, and evil is the abode of the unjust.

The Christian fanatics are the ones that don't know or obey the Bible, for example:

(Rom 13:1) Let every person be in subjection to the governing authorities.

Yes, religion has been the cause of more wars that I can count. But see historically what has happened to any country that has tried to stifle "other" or "all" religions. Our founding fathers were much wiser than we.

[End religious statement]

[real anonymous]

Just when you thought it couldn't get any worse: Gonzales out, Chertoff in. Unreal. Perhaps though, this will seal a Democratic presidency. We certainly reap what we sow.

[Just an ordinary inventor(TM)]

JAOI’s personal comments (including two taboo subjects; read at your own peril):

ON POLITICS: Above all else, Bill disgusts me because of his disrespect for the office of President of the United States. Hillary is perhaps the smartest woman in politics, perhaps too smart; I don’t trust her to put We the People above her own interests. VP Gore disgusts me for two reasons: (i) I believe he would liked to have seen a few more Katrinas last year just to prove him right; Gore is a total phony (which is not to say anything about warming), and (ii) I had devastating personal disappointment with his VP non-feasance.

I despise all who would see America fail here or there just so their political interests can then prevail. I am not at all comfortable with fellow citizens who don’t care about our nation losing the advantage and prestige of being top dog and being suckered into the crowd of second-rate nations. Being on top isn’t everything, but it is the American thing, and that is something to be cherished.

Bush II’s sincerity scares the living sh-t out of me. However, I believe neither Gore nor Kerry has any concept whatsoever of what sincerity is - and that’s even worse - for that you would need to have a heart and they don’t. Also, I’d guess we’d have been hit more than once so far had either Gore or Kerry become President. I believe it likely we will be hit again no matter; it is just a matter of time. The best chance our nation would have is with an independent, perhaps Bloomberg, I hope Bloomberg runs and wins, I really really do.

I also have a personal grudge v. Bush II; he is responsible in large part for causing and or allowing my ability to provide for my family to become threatened - - as a self-employed inventor, patents are my livelihood. Owing to the weakening-as-we-speak American patent system, far fewer self-employed inventors will wind up on easy street, and many many more will wind up on the street. And I personally hold Bush II and all those bi-partisan bastards in Washington culpable for allowing organized banking lobbies to cut the heart out of the bankruptcy laws instead of routing out the abuses thereof.
-----------------------

ON OUR CONSTITUTION: I have perhaps a more pragmatic allegiance to the Constitution than others, especially during war time. I believe the preamble rules the rest:

“We the People of the United States, in Order to form a more perfect Union, establish Justice, insure domestic Tranquility, provide for the common defence, promote the general Welfare, and secure the Blessings of Liberty to ourselves and our Posterity, do ordain and establish this Constitution for the United States of America.”

For example: It makes perfect sense to me to profile based on nationality, behavior and other factors. It makes less sense to do random searches of backpacks to get on the subway during rush hour. I don’t want me, my family, my neighbors or any of my fellow Americans to die at the hands of crazies, and I would turn my head if pragmatic means are deemed necessary to “PROVIDE FOR THE COMMON DEFENCE.” The gruesome realities of the day make our election of leaders even more important than in peacetime. Lest anyone have any doubt, we are in the worst kind of war, a holy war, and, given the variety and availability of wmd, today’s holy war is much worst than the Crusades.

Lord only knows why the attack on the World Trade Center in 1993 wasn’t our wake up call - - had we had a hawk instead of a preoccupied love-dove in the oval office, perhaps it would have been our wake up call and those two proud American icons in the world’s most famous and prestigious skyline would be standing today and we wouldn’t have lost three thousand citizens and America’s finest on 9/11, and perhaps tens of thousand young Americans wouldn’t have been lost to the grave and physical and mental wounds that will never heal, and perhaps we wouldn’t be so stressed in the Mid East, perhaps...
-----------------------

ON RELIGION: My pastor was open minded, and my hero, and a great man who went on to the central Lutheran office to administer to teenagers’ needs en masse. After hours of debate with my him countless times in Sunday school and in Luther League gatherings, he was happy to let me believe what made sense to me and develop my own principles, not necessarily consistent with the rule of any organized religion.

I’ll again share some personal thoughts I wrote a couple years ago for my family’s Christmas card: Feeling thankful and projecting prayers of thankfulness into the incredible universe is good for the body and spirit - - such thankfulness is positive thinking, and it fosters self-fulfilling prophecy.

I favor in patriotism. Together, citizens comprise power greater than one. Historically, America’s democracy has thrived on strength, honor and principled Biblical behavior, and by helping one another.

These not-particularly-religious principles, and these, comprise my personal beliefs.

>He that hath principles should abide them.
>He that hath principles and does not abide them should try harder.
>He that hath no principles be damned, and that’s fine by me

I take pride in being an American. Others don’t, and that’s their personal choice, and I have no problem with that. After all, this is America. That, however, is not my choice. Insofar as such well-deserved pride is a good positive feeling to have, others are missing out.

I am grateful to be an American, and I give thanks at least daily for being an American, despite the fact that, during for the past couple of administrations, there is and has been a severe shortage of sensible studious statesmen in Washington, and despite that life in America seems to be growing scarier and scarier owing in part to the scarcity of leadership integrity in all three branches of government, leadership that abides the Constitution religiously.

Yours Truly,
Just an ordinary standup Constitutional philosopher(TM)
a/k/a

[Djinngenie]

Dear realanonymous

(to continue the threadjacking, and to take my mind off the continuation rules)

Doesn't Jesus outrank Paul? Who's a real Christian to obey?

"Do not think that I have come to send peace on earth. I did not come to send peace, but a sword. I am sent to set a man against his father, a daughter against her mother, and a daughter-in-law against her mother-in-law" (Matthew 10:34-35)

And, uh, do you ever read the Old Testament? Explicit instructions on warfare. Notice the above quote from the Koran discusses casting terror "into the heart." The OT is much more explicit about what to do with enemies--slavery or death. One example:

“When you approach a city to fight against it, you shall offer it terms of peace. If it agrees to make peace with you and opens to you, then all the people who are found in it shall become your forced labor and shall serve you. However, if it does not make peace with you, but makes war against you, then you shall besiege it. When the LORD your God gives it into your hand, you shall strike all the men in it with the edge of the sword. Only the women and the children and the animals and all that is in the city, all its spoil, you shall take as booty for yourself; and you shall use the spoil of your enemies which the LORD your God has given you… Only in the cities of these peoples that the LORD your God is giving you as an inheritance, you shall not leave alive anything that breathes (Deuteronomy 20:10-17)

Perhaps you shouldn't quote-mine the Bible.

[Just an ordinary inventor(TM)]

Dear Djinngenie,

With all due respect, if there be a point in your post, I’m not sure I see it.

Are you suggesting that, to learn anything from the Bible, or from any other great book, you have to buy into it hook line and sinker?

[R]eal anonymous made a currently crucial and central distinction, i.e.,
“Regarding fanatics, however, there is one very significant difference between "Muslim fanatics" and "Christian fanatics" that I hope doesn't escape your attention.”
He “punctuated” his point, which, of course, is painfully true, with quoted phrases.

[R]eal then correctly and courageously criticized religion with its war count and communicated the corresponding pertinent Constitutional credo so clear to our much wiser founding fathers.

[real anonymous]

[Apologies everyone: this is to Djinngenie]

Djinngenie, I appreciate your remarks. If you want to pursue this discussion, please feel free to e-mail me at the address indicated higher in this thread. But to address your comments briefly:

Deuteronomy 20: Yes, those were God's instructions to the Israelites as to how they should act more than 3400 years ago. Nowhere in the Bible are Christians today commanded to be like Israelites in how they relate to the cities or nations, or is it even implied that they should follow those instructions. Jesus in fact contradicted rabbis' teaching on relationships with enemies, and He completely overturned the Jewish mindset of the day:

[Jesus said,] "You have heard that it was said, 'You shall love
your neighbor and hate your enemy.' But I say to you, love your
enemies and pray for those who persecute you, so that you may be
sons of your Father who is in heaven; for He causes His sun to rise
on the evil and the good, and sends rain on the righteous and the
unrighteous. For if you love those who love you, what reward do
you have? Do not even the tax collectors do the same? If you greet
only your brothers, what more are you doing than others? Do not
even the Gentiles do the same? Therefore you are to be perfect, as
your heavenly Father is perfect. (NASB (R))

Matthew 10: The sword is metaphorical - even a babe should understand that. It is metaphorical to the same extent as the sword that was to pierce Mary's heart (Luke 2:35). And yes, if I may, Jesus **did** come to cause division: dividing the new from the old, the light from the darkness, and calling a people who love God and love their neighbors to Himself.

In so far as higher rank goes, Jesus was speaking as the Son of God, and Paul by the Spirit of God, so neither is higher.

[From the recesses of your mind]

The type of saviour I need knows the inner workings of Microsofts OS and how to send e-mails. Could Jesus do that:)

[Michael L. Slonecker]

Simply out of curiosity, how many of those posting comments here have studied the plaintiff's complaint?

I express no opinion on the propriety of the course taken seeking a preliminary injunction. Neither do I express an opinion concerning ripeness. I do, however, hold to the view that this is not a case of constitutional dimension. I also hold to the view that a shotgun approach towards stating deficiencies about what the PTO is doing weakens the force of arguments containing real legal substance.

There are two questions I view as being of paramount importance, and I believe they are really quite simple. First, are the rules consistent with the relevant portions of Title 35? Second, have these rules been promoted consistent with the substantive and procedural requirements of the Administrative Procedure Act? Why other issues are presented in the complaint in a manner resembling a traveling evangelist preaching under a tent escapes me.

If the plaintiff is intent on pursuing his case, then I hope at the very least the complaint is amended to eliminate rhetoric and focus squarely and forcefully on the real issues.

[Callooh]

I agree with MS, the rhetoric just distracts. I'm guessing this complaint won't be the only one in the pipeline though.

Re: "bad faith" continuations - It isn't bad faith to preserve your ability to craft claims that best reflect an invention you're commercializing - something you may not appreciate when you first file.

What strikes terror most is how the PTO will continue to misapply the term "patentably indistinct." The new rules have been rolled out with no mention of Examiner retraining on this one. Look for continued whimsy in restriction requirements with even more dramatic effects on IP rights.

[patent leather]

I think Tafas has a good chance to prevail here. The new rules are retroactive which I think would violate the APA and (while I am not positive about this), I don't think the court would have authority to strike down parts of the rules. That is, either the rules stand or fall. However, I do think for political reasons the Virginia District court would be reluctant to overturn anything the USPTO does. I think only the CAFC would have the balls to right this mess. Read the dissent in the Bogese case. So I think it is only a matter of time. I also suspect Tafas will attempt to file a continuation on Nov. 1 so then it can then be declined, upon which I would expect him to amend his complaint. Then his will be a "better" case as Dennis points out.

[me]

Anyone have an update on the good Dr.'s case?