Discovery Denied and Briefing Schedule Set in Litigation over New Patent Office Rules

Discovery Denied and Briefing Schedule Set in Litigation over New Patent Office Rules

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The plaintiffs' attempts at discovery have been denied and a schedule has been set for summary judgment briefing in the litigation over the US Patent and Trademark Office's (USPTO) controversial new rules regarding continuing applications and claims. The case is Tafas v. Dudas consolidated with SmithKline Beecham v. Dudas, in the US District Court for the Eastern District of Virginia.

In a Memorandum Opinion and Order dated November 28, 2007, Magistrate Judge Thomas Rawles Jones, Jr., denied requests by the plaintiffs for discovery from the USPTO, including several depositions that had been noticed, referring to the attempts at discovery as a "classic 'fishing expedition.'" The Order also granted the defendants' motion asking the court to issue a summary judgment briefing schedule without discovery.

Briefs for summary judgment are due on December 20, 2007, as are amicus curiae briefs. Oppositions are due on January 22, 2008, and rebuttals on February 1, 2008. A summary judgment hearing is scheduled for February 8, 2008. On October 31, 2007, Judge James Cacheris granted a preliminary injunction preventing the USPTO from implementing the changes in the Claims and Continuations Final Rule on November 1, 2007, until the case could be heard on its merits. Thus, the new rules will not take effect at least until mid-February 2008, and it remains to be seen if the proposed "continuation rules" will be modified further.

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