Legal Brawl Over Patent Rules Creates Wide Trenches As More Groups Weigh In

The legal battle over the U.S. Patent and Trademark Office's efforts to limit certain patent filings intensified last month as various parties jumped into the fray.

More than a dozen organizations filed amicus briefs in the litigation over PTO's continuation rules and several others filed motions seeking to submit briefs. Most of the filings support GlaxoSmithKline and inventor Triantafyllos Tafas, who filed separate suits to prevent the patent office's rules from being implemented. But a disparate group of consumer organizations voiced support for the PTO, as did Intel and a group of 14 law professors.

The two suits - Tafas v. Dudas and SmithKline Beecham v. Dudas - have been consolidated in the United States District Court of the Eastern District of Virginia before Judge James Cacheris. Both plaintiffs have filed motions for summary judgment to permanently block the rules while the PTO has filed motions for summary judgment against both plaintiffs. Cacheris has tentatively scheduled a hearing on the motions for Feb. 8.

Once More Into The Injunction

Tafas' attorney James Nealon, a partner at Kelley Drye & Warren, said most observers of the case think Cacheris will rule as he did in October when he granted GSK's motion for a temporary restraining order and preliminary injunction. "The arguments are not all that different" than they were then, Nealon said.

The PTO rules would limit the number of continuation and continuation-in-part applications an inventor can submit to the patent office. If applicants file more than two follow-on applications they must provide a document explaining why they could not have included the information in a previous submission. These applications amend claims or provide additional evidence of an invention's patentability and retain the benefit of the earlier application's filing date.

The agency announced in August that it was implementing the new rules in order to allow examiners to focus more on new applications and reduce the backlog of filings. Tafas filed his complaint the following day (¹ (Also see "New Patent Rules May Hurt Biotech Industry; Limits Set On Certain Filings" - Pink Sheet, 27 Aug, 2007.), p. 16).

GlaxoSmithKline filed a similar suit against the agency six weeks later. The company argued that the agency had exceeded its authority under the Patent Act and that the rules would prevent GSK from obtaining patents on one or more of its inventions (² (Also see "PTO Hit With Second Lawsuit Opposing Continuation Rules As GSK Joins Fray" - Pink Sheet, 15 Oct, 2007.), p. 19). On Oct. 31, Judge Cacheris issued a preliminary injunction concluding that "there is a genuine possibility" that GSK would succeed in its argument (³ , p. 28).

The Biotechnology Industry Organization and the Pharmaceutical Research and Manufacturers of America are among the groups that filed briefs in support of GSK and Tafas. The PTO rules would particularly impact biotech companies, which file the bulk of continuation applications. Robert Budens, president of the Patent Office Professional Association, the union representing patent examiners, has said examiners in the biotech and organic chemistry group handle twice as many continuation applications as any other group.

Monsanto Co., Elan Pharmaceuticals, CropLife America and the American Intellectual Property Law Association were among those who filed briefs backing GSK and Tafas. General Mills and four other Minneapolis-based companies submitted a joint brief in support of the plaintiffs while AmberWave Systems, Tessera and Nano-Terra were among the signatories of another joint brief. The financial firms Polestar Capital Associates and Norseman Group also filed a joint brief opposing the PTO rules.

IT Giants And Consumer Groups Back PTO

Meanwhile, the agency got backing from numerous consumer groups and law professors. Thirteen organizations filed a joint motion to submit an amicus brief in support of the PTO, including the Consumer Federation of America, AARP and Prescription Access Litigation. Joining them were the Computer & Communications Industry Association and Software Freedom Law Center.

A group of intellectual property and administrative law professors, led by renowned IP scholar Mark Lemley of Stanford Law School, also filed a motion to submit a brief in support of PTO. Lemley co-authored a 2004 law review article, "Ending Abuse of Patent Continuations," with Kimberly Moore, who was appointed to the U.S. Court of Appeals for the Federal Circuit in 2006. In their proposed brief, the law professors contend the PTO rules are procedural and that patent law gives the agency authority to make regulations governing its internal proceedings.

Nealon and his co-counsel Steven Moore, also a partner at Kelley Drye, noted that there has been overwhelming support for Tafas and GSK. At the preliminary injunction hearing the courthouse was packed with people opposed to the rules, Nealon said. They believe people have sought to file briefs in support of PTO to counter that atmosphere.

One of the last companies to weigh in on the dispute was Intel, which filed both a motion to submit an amicus brief and the brief itself on Dec. 28, the day after the filing deadline. The technology company said it has been frustrated by the time it takes the PTO to process applications and has increasingly been "a victim of abuses of continuation practice." Intel cited the suit brought against it by the Lemelson Foundation Partnership for infringing patents that were issued to Lemelson in the 1980s and 1990s yet claimed priority to applications the inventor filed in the 1950s and 1960s.

But for biotech and pharma companies, the long timeline in product development requires them to file continuation applications.

PTO's rules "would truncate not just GSK's rights, but the existing rights in more than 700,000 currently pending patent applications," GSK stated in its Dec. 20 motion for summary judgment. "The unparalleled outcry of opposition highlights the devastating repercussions of these rules."

GSK cited opposition to the rules from both Sen. Charles Schumer, D-N.Y., who in October sent a letter to PTO Director Jon Dudas requesting that he halt implementation of the rules, and Republican presidential candidate Mitt Romney, who in November said he applauded Judge Cacheris' preliminary injunction against the PTO.

- Brenda Sandburg ([email protected])