Having recently successfully opposed proposed limits on patent continuation applications, requests for continued examination, and claims-per-patent, inventor Triantafyllos Tafas now seeks remuneration for what he alleges was an unnecessarily protracted battle with the USPTO.

Tafas filed a motion (and a memo in support) on March 15th in the Eastern District of Virginia seeking recovery of attorneys’ fees and other expenses related to the earlier case.  Tafas’ claim is grounded in the Equal Access to Justice Act, which permits recovery of such fees where a party has unreasonably, and in bad faith, delayed the outcome of litigation.  In his motion, Tafas characterizes the USPTO’s rules package as “transparently ultra vires” and asserts that its defense of the package was “not substantially justified” under the Act.

Specifically, Tafas suggests that the USPTO “knew or reasonably should have known by no later than January 2008” that it lacked the necessary approval from the Office of Management and Budget to move forward with the proposed rule changes.  The agency nonetheless “vigorously litigated” the case, prolonging its resolution and causing Tafas to incur substantial legal fees.

Tafas further asserts that he is entitled to compensation at common law under the “common benefit” doctrine, as the outcome of his prior suit conferred a benefit on other inventors who otherwise would have been subject to the proposed limits.

Tafas claims that even the USPTO benefited from the prior suit insofar as it was spared the expense of “proceeding to implement the Final Rules only to have them subject to future challenge and invalidation.”

A motion hearing has been set for March 26, 2010 before District Judge James C. Cacheris.

Ryan Davis of Law360 reported on Tafas’ motion here.

In a surprising decision in Tafas v. Kappos on November 13, 2009, the Federal Circuit granted the parties' joint motion to dismiss the appeal as moot, but denied the parties' joint motion to vacate the judgment of the Eastern District of Virginia.  The court reasoned that dismissal of the appeal was proper as moot because the USPTO had rescinded the rules that formed the basis for the litigation.  However, the court also reasoned that vacatur of the Eastern District of Virginia's judgment was not proper because the mootness arose due to a unilateral act of the USPTO in rescinding the rules.  In contrast, vacatur of the EDVA's decision would have been proper if the mootness had arisen from an external cause over which the parties had no control - that was not the case.  Accordingly, the EDVA's decision stands.

The Tafas v. Doll decision has been previously reported on the blog here. 

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The USPTO Director David Kappos signed a new final rule rescinding the 2007 Patent Regulations Package previously proposed by the Bush Administration.  The USPTO also announced that it would be filing a motion to dismiss the currently pending Tafas v. Doll lawsuit, which was initially brought in the Eastern District of Virginia by inventor Triantafyllos Tafas and GlaxoSmithKline to prevent the rules from taking effect. In justifying the reasons for withdrawing the highly unpopular regulations, Kappos stated that “the USPTO should incentivize innovation, develop rules that are responsive to its applicants’ needs and help bring their products and services to market.”  Kappos further noted that “this course of action represents the most efficient way to formally and permanently move on from these regulations and work with the IP community on new ways to take on the challenges these regulations were originally designed to address.”

The Tafas v. Doll decision has been previously reported on the blog here. 

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The Federal Circuit has granted the parties’ joint motion to stay the proceedings in Tafas v. Doll.   The case docket is available on PACER (see page 1, Entry 222).  Under the parties’ motion, the Appellants’ opening brief to the en banc court, if still necessary, would be due sixty days after the confirmation of the new Director of the USPTO. 

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On Friday, the U.S. Patent and Trademark Office (USPTO) and the appellees in the Tafas case asked the Federal Circuit to stay the proceedings until sixty days after the new PTO Director is confirmed by the U.S. Senate. Joint Consent Motion for a Stay of En Banc Proceedings.  If granted, the joint motion would postpone for several months the due date for the parties’ en banc briefs, which are currently scheduled for submission in August and early September.  The parties contend that a stay is justified because the new Director may revise the USPTO’s position in the case and thereby change or moot the issues that are presently before the Federal Circuit.  See our previous posts about this case here and here.

At issue in Tafas are several new rules the USPTO is proposing to implement. The rules would limit prosecution practices concerning continued examination (continuation applications and requests for continued examination) and would require an examination support document for applications exceeding certain numbers of independent claims or total claims.  After the Eastern District of Virginia struck down the rules on summary judgment in 2008, that decision was reversed in part in March 2009, but the Federal Circuit has since taken the case en banc.

In June, President Obama nominated David Kappos as Under Secretary of Commerce for Intellectual Property and Director of the USPTO. The confirmation hearing for Mr. Kappos before the Senate Judiciary Committee is scheduled for this Wednesday, July 29, 2009.  The parties in Tafas argue that the proposed stay period will give the new Director “an opportunity to examine the rules at issue…and determine what course the USPTO should take in the future with respect to those rules, including whether to rescind the rules.” Under the parties’ proposal, the Appellants’ opening en banc brief, if still necessary, would be due thirty days after the expiration of the stay. The Appellees’ responsive brief would be due twenty days after the opening brief was filed and be followed by the Appellants’ reply brief within seven days thereafter.

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The United States Court of Appeals for the Federal Circuit has agreed to rehear en banc the highly anticipated appeal in Tafas v. Doll.  The case initiated in the Eastern District of Virginia, in which the Court enjoined the implementation of new rules relating to patent application continuations and claims.  The Court's March 20, 2009, opinion was expressly vacated and the appeal was reinstated in the Court's July 6, 2009, Order. 

On March 20, 2009, the Federal Circuit issued its decision in Tafas v. Doll, an appeal by the PTO from the Eastern District of Virginia's decision to enjoin the PTO from implementing the Claims and Continuation Final Rules.  The opinion can be found here:  Tafas v Doll.pdf.  The Claims and Continuation Final Rules limit the number of requests for continued examination (Final Rule 114), require submission of a new "examination support document" when filing a certain number of claims (Final Rules 75 and 265), and limit the number of continuation applications that can be filed (Final Rule 78).  With Judge Prost writing for the majority, the Court upheld Final Rules 75, 114 and 265, finding them to be procedural rather than substantive, and therefore within the rulemaking authority of the PTO.  The Court struck down Rule 78, however, as inconsistent with 35 USC § 120, which states that any continuation or continuation-in-part application "shall" be granted priority to the patent application upon satisfaction of certain requirements. 

Judge Bryson wrote a concurrence in striking down Rule 78, which left open the possibility that it could be redrafted in a way that would save it, and Judge Rader dissented with respect to Final Rules 75, 114, and 265, concluding that all of them were substantive and therefore beyond the PTO's rulemaking authority.  The Court ultimately remanded the case to the Eastern District of Virginia to address: "whether any of the Final Rules, either on their face or as applied in any specific circumstances, are arbitrary and capricious; whether any of the Final Rules conflict with the Patent Act in ways not specifically addressed in this opinion; whether all USPTO rulemaking is subject to notice and comment rulemaking under 5 U.S.C. § 553; whether any of the Final Rules are impermissibly vague; and whether the Final Rules are impermissibly retroactive."