One of the plaintiffs in the PTO rules case, Dr. Tafas, has filed a combined petition for the Federal Circuit panel to rehear the case, or alternatively, for the entire court to rehear the case en banc. At this stage, it is unclear if either the PTO or the other plaintiff, GlaxoSmithKline, has filed its own petition. Patent Docs has a good summary of Dr. Tafas’ arguments.
Basically, Dr. Tafas argues that the panel decision misapplied Supreme Court and Federal Circuit precedent in several ways. First, the panel used the incorrect standard for determining whether a rule is substantive or non-substantive; second, the panel failed to consider the implications of the rules on individual rights and obligations; third, the panel failed to address whether the PTO had authority to enact the rules under the Patent Act; and finally, the panel erred in its Chevron deference analysis.
Often, the court denies these types of petitions out of hand. When the court believes the matter is a closer call, it may request a response from the other parties, in this case the PTO and GSK. Even though the panel decision is completely wrong and the case is of significant importance, I still believe the court will deny to rehear the case en banc.
At the recent Biotechnology Industry Organization (BIO) conference, a panel that included Sherry Knowles, Vice President of Corporate Intellectual Property at GlaxoSmithKline, and Professor John Duffy of George Washington University Law School, were asked about their thoughts on the prospects of the Tafas v. Doll case. Ms. Knowles stated that she believed the plaintiffs would get a better result at the Supreme Court than they would at the Federal Circuit.
Prof. Duffy disagreed. He believes the plaintiffs would not be happy if the Supreme Court got its hands on the case. The justices are not familiar with patent law, but they are intimately familiar with administrative law, as a number of them previously taught the subject or were members of the D.C. Circuit Court of Appeals that hears a large number of administrative challenges. The Supreme Court would probably defer to the PTO’s interpretation of the proposed rules, including the continuation rules struck down by the Federal Circuit.