By
Donald Zuhn –-

On
Monday, Counsel for Dr. Triantafyllos Tafas filed a reply to the joint motion
to dismiss the appeal in Tafas v. Kappos
and for a vacatur of the District
Court's injunction and judgment filed by the U.S. Patent and Trademark Office
and Appellee GlaxoSmithKline on October 9, 2009.  The joint motion by the USPTO and GSK was filed one day
after the Office announced that Director Kappos had signed a new Final Rule
rescinding the claims and continuation rules (see "'New Rules' Officially Rescinded").

In
his reply brief, Dr. Tafas "applauds the [USPTO] for its recent change in
policy direction concerning the claims and continuation rules," and offers
to work with USPTO Director Kappos and other patent community stakeholders
"toward developing efficient solutions to the PTO's backlog
problems."  However, the brief outlines four technical grounds for Dr. Tafas not joining the
USPTO and GSK in seeking vacatur of
the District Court judgment:

(1)  Consenting to vacatur might impair Dr. Tafas'
right to attorneys' fees and costs.

(2)  Supreme Court precedent does not permit the losing party to have a District Court
judgment vacated when the losing party merely declines to pursue an appeal.

(3)  Several issues were never reached by the District Court.

(4)  It is unclear whether the USPTO's motion to dismiss the appeal was truly
voluntary in light of a direction by the White House Office of Management and
Budget (OMB) that the USPTO withdraw the claims and continuation rules pursuant
to the Paperwork Reduction Act (see
"Response to Rescission of Claims and Continuations Rules"
for an explanation of the circumstances surrounding Dr. Tafas' last ground).

On
the basis of these four grounds, Dr. Tafas requests that the Federal Circuit
dismiss the USPTO's appeal as moot, deny the vacatur request as contrary to controlling law, and remand the case
to the District Court.

While
acknowledging that "the substantive issues raised by the PTO on appeal . .
. have now been rendered moot by virtue of the PTO's voluntary removal from the
Code of Federal Regulation on October 14, 2009 of the changes in the Claims and
Continuation Final Rules dated August 21, 2007," the brief states that the
USPTO's decision to rescind the claims and continuations rules "while
again commendable and praiseworthy, does not, and cannot, render moot [Dr.]
Tafas' right to apply either in this Court or at the district court — after the entry
of final judgment dismissing the appeal — for an award of fees and costs as a
prevailing party."

The
brief also states that "vacatur
of the district court's judgment by this Court would be directly contrary to
U.S. Supreme Court precedent, which plainly provides that any mootness caused
while the case is on appeal by the unilateral act of the losing party in the
district court below (i.e., the PTO)
is not a proper grounds for a court
of appeals to vacate the underlying district court judgment."  Arguing that "[w]here an agency of
the federal government, such as the PTO here, has been adjudicated to have
engaged in dubious actions that supersedes its authority," the brief
contends that "equity mandates that the ruling not simply be erased as if
it never happened."

The
reply brief concludes by offering one example of an issue
that was uniquely raised by Dr. Tafas, not joined by GSK, and not rendered moot by the
Office's rescission of the claims and continuations rules (i.e., Dr. Tafas' challenge to the USPTO's "long-standing
practice" of permitting the issuance of first action final rejections after
the filing of an RCE as being contrary to 35 U.S.C. § 132(a)).  "[I]n gratitude to the PTO for
finally rescinding the Rules, and in the interests of engendering a new spirit
of cooperation and rapprochement with the PTO," the brief states that Dr. Tafas
will withdraw the above challenge when the case is remanded to the District Court.

Patent Docs
thanks James Nealon of Kelley Drye & Warren LLP for kindly providing us with
a copy of Dr. Tafas' Reply to Motion for Dismissal of Appeal and Request for
Remand.