Federal Circuit Dismisses Tafas Appeal

On November 13, 2009 the Federal Circuit, en banc, ordered the dismissal of the appeal in Tafas v. Kappos (case number 2008-1352). Tafas was the case challenging the validity of the USPTO's expansive August 2007 patent rules. In October, the USPTO rescinded the controversial rules which, among other things, required applicants to limit the number of claims and continuations that could be brought in each patent application. The Federal Circuit found that the USPTO's recent rescission of the rules rendered the dispute moot and dismissed the appeal.

In the same order, the court declined to vacate the district court's decision. In that decision, the district court had voided the rules because it found them to be substantive in nature and in excess of the USPTO's rulemaking authority under 35 U.S.C. §2(b)(2). Citing Supreme Court precedent, the Federal Circuit held that vacatur is not appropriate when the issues become moot due to a voluntary act by the losing party (i.e. USPTO's voluntary rescission of the rules).