I just received word that the United States Patent and Trademark Office, Dr. Triantafyllos Taffas and SmithKline Beecham Corporation (i.e., GlaxoSmithKline) filed a joint request for an extension of time to request either reconsideration or rehearing en banc at the United States Court of Appeals for the Federal Circuit. The motion seems to be primarily provoked by the government who is considering whether to file a petition for rehearing or for rehearing en banc. Joshua Waldman would be the government attorney who would have primary responsiblity for preparing any petition for rehearing or for a request to hear the case en banc, and due to other litigation matters he will be unable to meet the previously established May 4, 2009 deadline. Because the government is asking for more time and Tafas and GSK have acquiesed, they ask for a similar extension, which seems only fair.
The joint motion states, in part:
Appellants John J. Doll and the United States Patent and Trademark Office (collectively “USPTO”), Appellee Triantafyllos Tafas (“Tafas”), and Appellees SmithKline Beecham Corporation d/b/a GlaxoSmithKline, SmithKline Beecham plc, and Glaxo Group Limited d/b/a GlaxoSmithKline (collectively, “GSK”), hereby jointly and respectfully move this Court for a 30-day extension of time in which to file any petition for rehearing or for rehearing en banc, to and include June 3, 2009. A petition would currently be due on May 4, 2009. No party has previously sought or received any extension of time in which to file any petition for rehearing or rehearing en banc. All parties consent to the relief requested in this motion.
I would anticipate this motion to be granted in due course, and will be quite surprised if the Federal Circuit does not grant the relief requested. The government position seems reasonable, the opposing parties have agreed, so expect this to be granted quickly. Given that a request has been made to extend the deadline, I think it is fair to also say that there will be either a petition for reconsideration or petition for en banc hearing filed on or before June 3, 2009. I cannot see what benefit a reconsideration would provide for either side, so smart money seems to be on a petition for an en banc hearing. With a matter so important as this I would also be surprised if there is not a rehearing en banc granted.
For the life of me I just do not see this case going back to the District Court. It seems that Judge Cacheris of the Eastern District of Virginia has made up his mind, and the panel decision while favorable to the USPTO did quite clearly provide a roadmap explaining to Judge Cacheris exactly how to once again strike down the rules packages. Perhaps this will also tend to suggest a rehearing en banc.
The wild card here is the appointment of a new Director of the PTO. If I were to be put into that position I would do everything in my power to withdraw the rules packages and start over. The decision issued by the original panel is extremely Patent Office friendly, but does invite further challenges to the rules based on the fact that they are indefinite and ambiguous. I would want to revise the rules package in light of this favorable opinion, provide more guidance with respect to what is required of applicants, and then let the chips fall where they may. If thoughtful tightening of the rules were to occur it would be virtually impossible to challenge the rules moving forward. If the government moves forward in court and does not withdraw the rules they will be doubling down with very little to gain and potentially a lot to lose.
There is more chance of a snowball surviving in Hades than me being appointed Director of the PTO under a Democratic Administration, no one in the Patent Office seems to take suggestions seriously and making wise and/or sound strategy or policy decisions seems to be outside of the capabilities of those who run the Patent Office. So while the superior path for the government is obvious to many, there is practically no chance it will be adopted — thank goodness!