Oppositions to motions for summary judgment filed in cases challenging claim and continuation rules
January 23, 2008

Yesterday, the USPTO, Glaxo, and Dr. Tafas filed their oppositions to the motions for summary judgment in the consolidated cases challenging the USPTO's claim and continuation rules. At first glance, they make many of the same arguments raised in the parties' motions for summary judgment.

Interestingly, however, the USPTO has also moved to strike portions of Tafas' summary judgment filings, as well as portions of the filings by amici Polestar Capital Associates and the Norseman Group. The USPTO argues that portions of these filings rely on facts outside the administrative record, and should therefore be stricken and not considered by the court.

This is interesting because the Polestar/Norseman brief is particularly harsh on the USPTO's procedures in promulgating the rules. Here is an excerpt from the introduction to the brief:

This Court has previously admonished the PTO to reexamine its "suspicious procedures." But here, the PTO failed its procedural rulemaking obligations. First, material data, analysis, and computer models were not disclosed as required by the APA. Because of the lack of disclosure, the PTO’s "10,000 page" record fails a number of APA requirements: the record lacks foundation, cannot be reliably understood, could not be fairly commented on during notice and comment, and could not receive proper executive branch review. Second, documents that were in the record have now been expunged from the "administrative record" given to this Court. Third, in replies to Freedom of Information Act (FOIA) requests in 2006 and 2007, the PTO asserted that certain documents did not exist; yet now they have suddenly appeared in the administrative record. The PTO's procedures are "suspicious" at best, and suggest that the "administrative record" is not an accurate or representative record of open-minded and reasoned decision making, but rather an ex post collection of documents cherry picked for this litigation.

The Polestar/Norseman brief has also sparked a fair amount of commentary online, as it points out numerous flaws in the USPTO's rulemaking process that led to the claim and continuation rules. One has to wonder if this is another case of "sour grapes" similar to when the USPTO moved to strike the declaration of former USPTO director Harry Manbeck during the preliminary injunction stage.

In addition to the oppositions to the parties' motions for summary judgment, the court also affirmed the magistrate judge's decision denying Tafas discovery in the case. Also, the court denied Intel leave to file its amicus brief in support of the USPTO, as it was filed too late.

Click below for links to the parties' filings relating to the summary judgment oppositions.

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