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« Tafas v. Dudas: Challenging PTO Rules Potential Feburary 8th Decision |
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Posted on Feb 08, 2008 at 12:45 PM | Permalink
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Interesting. She was a law clerk to Judge Cacheris.
Feb 08, 2008 at 12:53 PM
While we would all like to know for sure what the outcome of this hearing is, that Cacheris took this case under advisement isn't necessarily bad. My bet is that Cacheris does realize the importance of this ruling, that he wants to make sure of the facts and law being applied, and that whatever he rules is "reversal proof" in case of eventual appeal to the Federal Circuit, which is likely no matter which side wins.
My understanding also is that the PI is still in place, which means the PTO Rules continue to remain in limbo. The longer these Rules stay in limbo, the more likely it is that these Rules won't have a chance for enactment (especially if Cacheris rules against the PTO) before the next administration comes in and the current PTO hierarchy is gone.
Feb 08, 2008 at 01:20 PM
I agree, Cacheris understands that his decision will be scrutinized by both sides. Better to make a reasoned decision rather than lampooned by the pundits... My bet is that the PTO lost on all points for unclean hands.
Feb 08, 2008 at 01:36 PM
I was there, and it was most interesting. Although I'm sure that Jill's report will be much more thorough and complete than any comments I might have (her report on the PI hearing was most excellent), I can say that Judge Cacheris seemed to be quite interested in the procedural vs substantive character of the rules, and whether that issue might be dispositive. My first reaction during the arugment was that the Judge had already made up his mind to void the rules but wanted to hear the argument - I still think that he was leaning that way but as has been said above wants to write the best opinion that he can.
As could be predicted, GSK/Tafas argued that the procedural/substantive issue was dispositive, and if the rules are substantive, they are void, whereas the PTO argued that the rules were procedural, but even if they were substantive, the PTO had the authority to make these substantive rules. The latter argument was well rebutted by GSK's counsel based on numerous Federal Circuit cases specifically addressing the PTO's rulemaking authority (in contrast to the PTO's cited cases, which all deal with rulemaking authority by other agencies in other circumstances).
I think, too, that if the Judge rules against the PTO on the Polestar brief, the rules may fall based on the failure of the PTO to follow proper rulemaking procedure, irrespective of any other issue regarding the character of merits of the rules.
No indication when he will rule, but I suspect he will act as quickly as prudently possible (and that appeals to the Federal Circuit will be filed within moments after that).
We're Going to Need a Bigger Boat |
Feb 08, 2008 at 02:29 PM
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Jason Rantanen, Associate ProfessorUniversity of IowaCollege of LawSSRN Articles
Occasional guest posts by IP practitioners and academics