In December, a three-judge panel of the CAFC heard the parties' arguments in the USPTO's appeal of Judge James Cacheris' April 2008 decision to grant a permanent injunction against the Office's final rules.
The rules would limit the number of continuing applications and claims applicants are allowed to file before having to submit an examination support document (ESD). Previously, there was no limit.
Earlier this month, GlaxoSmithKline and Triantafyllos Tafas petitioned the full Court to re-hear the case, after that panel found all but one of the Office's final rules valid and said that they were procedural in nature, rather than substantive.
"The majority took a very expansive view of what a procedural rule was," said Paul Rivard of Banner & Witcoff, speculating as to possible reasons why the Court decided to grant the re-hearing. "There must be judges on the Court who are concerned with the breadth of the ruling," he said.
A panel of 11 CAFC judges (Judge Lourie did not take part) on Monday agreed to rehear the case at a time yet to be determined. The USPTO's briefs are due 30 days from July 6 and the opposing brief will be due within 20 days of that filing.
There is a possibility that David Kappos, who is set to be confirmed as the new USPTO director, could choose not to implement the rules, even if the decision stands.
