Oral argument in Tafas 5 Dec. 2008

Gene Quinn notes that oral argument in USPTO v. Tafas & GSK Appeal is set for Dec. 5, 2008 but argues that some one at the USPTO or DOJ ought to bag the appeal.

Of note in the rousing post are two comments about Mark Lemley:

#1.

Gene,

I agree with you completely on the merits, but doubt that anything will be done to stop this case.

If I remember correctly, the law professor (Lemly?) who wrote the academic brief supporting Dudas is an advisor on IP issues to Obama. He surely wants these rules and is willing to fight to the end for them. Who in the transition team has the ear of DoJ or Commerce to move it in the other direction?

No one in the current administration is going to take the responsability for a complete policy reversal in the waning days of the administration.

I'm afraid that this will move forward of its own momentum.

#2.

Alan-

I am afraid you are probably right, but I just don't see any reason to force a decision that will open the flood gates to future challenges to any Administrative rulemaking.

I don't know whether Lemley is an Obama advisor, although I do know that he supports limits on continuations. I have no problem with Obama supporting that, but it needs to be done through legislation. What that means, of course, is that it will never happen. There are to many Fortune 1000 companies that simply cannot accept limitations on claims and on continuations, so let them try and get legislation if they can.

Whey Lemley supports this is a mystery to me. I don't always agree with him, but he has always seemed knowledgable. Limiting continuations will have no real affect on pendency or applications filed. It will only further damage companies that have meaningful innovations and reduce corporation value. Why would anyone want to implement policies that would further damage the economy?

**IPBiz notes that Lemley

--> reversed himself on the Quillen/Webster vs. Clarke debate on patent grant rate numbers

--> reversed himself on KSR

--> thought Gary Boone invented the integrated circuit

--> favored patentee in Metabolite

Seemed knowlegable? Where have you been, Gene?

Also, the law review article "Ending Abuse..." preceded the proposed rules and is cited in the FR for support for the proposed rules, and is co-authored by Lemley and Moore.

**comment made-->

Of --Why Lemley supports this is a mystery to me. I don't always agree with him, but he has always seemed knowledgable.--

#1. The law review article by Mark A. Lemley and Kimberley L. Moore, Ending Abuse of Patent Continuations, 84 B. U. L. Rev. 63 (2004) at footnote 22 misrepresents statements of the USPTO's Robert Clarke. The mistake of Lemley and Moore is discussed in http://jip.kentlaw.edu/art/volume%204/4-1-4.htm, but was never corrected. In his "rubberstamp" article on SSRN, Lemley reversed his position on Clarke's analysis of patent grant rate.

#2. Of "knowledgeable," see for example,

http://ipbiz.blogspot.com/2008/11/sometimes-inventors-do-understand.html

***ALSO

See Exhibit 9