By Kevin E. Noonan —

Gene Quinn from the PLI blog reports today that Judge Cacheris
denied from the bench Plaintiffs’ motion for discovery in the challenge to the
claims and continuation rules enjoined by the Court on October 31st (see "Tafas v. Dudas; SmithKline Beecham Corp. v. Dudas (E.D. Va. 2007)").  Patent Office officials, including Director
Jon Dudas and Patent Commissioner John Doll will not have to sit for
deposition, nor will the Office be required to produce documents or a privilege
log for any documents it seeks to withhold.  Plaintiff GlaxoSmithKline (GKS) and Dr. Triantafyllos Tafas have until December 20th to file their summary judgment
motions.  While the Court did not
explicitly state that amici are under the same deadline, prudence suggests they
proceed with the understanding that later-filed briefing may not be considered
by the Court.

Although somewhat of a surprise, the "victory"
is a double-edged sword for the Office.  On the one hand, they will not be subject to the burden of fighting over
privilege logs, something that could be expected in any litigation but would be
almost a certainty for this administration.  And Mssrs. Dudas and Doll should be happy to stay out of the witness
chair.  However, it will be especially
difficult for the Office to assert any additional evidence in support of either
their opposition to any GSK/Tafas summary judgment motions or in their own
motions.  And as Mr. Quinn notes in his piece,
GSK still has its Freedom of Information Act request pending, which may raise
the privilege issue.  One possibility
(from a reliable source) is that the Office doesn’t have any responsive
documents; in this scenario, the Office proposed the rules in disregard for the
requirement for the kind of agency activities that would have produced
documents in the first place.  If that is
the case, it would be relevant to GSK/Tafas’s argument that the Office violated
the statutory mandates of the APA when promulgating the "new rules."

In addition, the absence of discovery should prevent the
Office from a "December surprise" of additional information that
might be persuasive to Judge Cacheris.  Being limited to the facts as they now exist, it’s hard to see how the
Office will be able to craft a more compelling argument than the one they
asserted in the preliminary injunction hearing.  (Although it will be interesting to see if the Solicitor’s office sends
someone more senior or better prepared to rebut GSK/Tafas’s arguments.)

And for the Grinches in the crowd, remember that some
poor junior lawyers will have their holidays ruined preparing the Office’s
response to plaintiffs’ motions.  Since the Office has argued that the
entire case should be expedited so the issues can be resolved and the new
rules, heaven forbid, be implemented as quickly as possible, it might be
hard to get Judge Cacheris to grant an additional time for responding.

For additional information on this topic, please see:

• "Tafas v. Dudas; SmithKline Beecham Corp. v. Dudas (E.D. Va. 2007)," October 31, 2007
• "USPTO Late to Its Own Party," October 31, 2007
• "GSK Secures Injunction," October 31, 2007 (includes links to Court’s Order and Opinion)
• "Senator Schumer Sends a Signal," October 30, 2007
• "GSK TRO/Preliminary Injunction Hearing," October 29, 2007
• "AIPLA Supports GSK’s Lawsuit Against the Patent Office’s New Rules," October 25, 2007
• "GSK Brings Out the Big Guns Opposing the New Continuation and Claims Rules," October 24, 2007
• "Hooray! – (Finally) the Big Dogs Have Joined the Hunt," October 11, 2007
• "Rules Challenger Amends Complaint and Withdraws PI Motion," September 11, 2007
• "Inventor Sues PTO to Prevent New Continuation and Claims Rules from Taking Effect," August 30, 2007