IPWatchdog is reporting that Tafas and Glaxo have filed a joint motion to extend the time to file a petition for panel rehearing or a petition for rehearing en banc. According to the motion, the government is considering whether to request rehearing of the panel’s decision that the continuation rules are invalid because they conflict with § 120 and government lawyer’s need more time to consider the issues. Tafas and Glaxo also acknowledge that they too may file a request for rehearing of the issues that they lost.
Any such petitions are currently due May 4 and the motion requests an extension until June 3. Such motions are granted on a fairly routine basis, especially when the reasoning is that the government needs the additional time.
Gene Quinn of IPWatchdog seems to believe that an en banc petition will be granted by the Federal Circuit; he believes the case will not return to the district court. I tend to disagree. I believe the original panel decision to be bad law in that it grants the PTO a large amount of rule-making authority that it did not have previously: virtually any rule can be argued to be procedural, rather than substantive. While I would like to see en banc review to undo the panel opinion, I just don’t see it happening at this time.
The case is certainly of sufficient importance to warrant further review by the entire court. Given the posture of the case, however, with so many unresolved issues that need to be decided by the district court, the case may not be ripe for such review at this time. The court may also not wish to expend additional judicial resources on the case given that we do not know whether a new PTO Director would support these rules. I believe en banc review to be doubtful at this time. Unfortunately, that means that Judge Prost’s opinion will continue to haunt us into the future on other issues.
My position seems to be the minority position. I hope that I’m wrong; the Federal Circuit has certainly surprised me before. Perhaps if a new PTO director is around when the court is considering any petitions, it may help to determine what the court will do with it.