CAFC Dismisses PTO Rules Appeal, but Does Not Vacate Judgment Below
November 13, 2009
The Federal Circuit Nov. 13 issued an en banc order that dismisses the appeal, but does not vacate the district court ruling in a suit challenging the Patent and Trademark Office’s controversial 2007 rules package which was rescinded last month (Tafas v. Kappos, Fed. Cir., No. 2008-1352, 11/13/09).
The court agreed with co-plaintiff Triantafyllos Tafas that vacatur would be inappropriate because it would allow the Patent and Trademark Office to invalidate an adverse judgment rendered below in district court.
Inventor Joins Motion by GlaxoSmithKline and PTO for Dismissal.
Inventor Triantafyllos Tafas is co-plaintiff with GlaxoSmithKline in a suit challenging the PTO’s 2007 rules package. The agency had proposed placing limitations on the number of continuation applications and claims that applicants could file as a way of reducing the backlog of patent applications. (72 Fed. Reg. 46,716).
In October 2009, Tafas agreed to join the GlaxoSmithKline-PTO motion to dismiss the appeal of the case to the Federal Circuit after PTO Director David Kappos issued a press release announcing the withdrawal of the rules package. However, Tafas opposed the GlaxoSmithKline-PTO motion to vacate the district court’s decision below that enjoined the rules’ enforcement.
En Banc Court Agrees to Dismissal, but Not to Vacate Judgment.
The Federal Circuit, which had agreed in a July 2009 order to take the case en banc, on Nov. 13 granted the parties’ joint motion to dismiss the appeal.
“The parties’ joint motion for dismissal of the appeal is proper because the USPTO has rescinded the rules that formed the basis of this litigation,” Chief Judge Paul R. Michel stated. “The appeal is therefore moot and dismissal of the appeal is not only appropriate, but required,” he said.
However, Michel found that it would be improper in this case to grant the GlaxoSmithKline-PTO motion to vacate the ruling below. He explained:
In U.S. Bancorp Mortgage Co. v. Bonner Mall Partnership, 513 U.S. 18 (1994), the Supreme Court held that when a party procures the conditions that lead to a case becoming moot, that party should not be able to obtain an order vacating the lower court decision that was adverse to that party. Vacatur, held the Court, is appropriate if the mootness arises from external causes over which the parties have no control, or from the unilateral act of the prevailing party, but not when the mootness is due to a voluntary act by the losing party, such as a settlement.
The motion seeks to paint this case as falling into the former category, but it appears to us to fall squarely into the latter. This is not a case in which the regulations have been overridden by a statutory change; instead, it is a case in which the agency itself has voluntarily withdrawn the regulations and thus set the stage for a declaration of mootness. The motion’s statement that an intervening regulatory change is directly analogous to an intervening statutory change is not persuasive. The agency does not control Congress; but it does control the decision to rescind the regulations. Thus, it was the USPTO (the losing party in the district court action) that acted unilaterally to render the case moot, and vacatur is not appropriate.
The parties’ joint motion for dismissal was granted, but the GlaxoSmithKline-PTO motion to vacate the judgment below was denied.
Tafas was represented by Steven J. Moore of Kelley Drye & Warren, Stamford, Conn.
GlaxoSmithKline was represented by F. Christopher Mizzo and Jeffrey Bossert Clark of Kirkland & Ellis, Washington, D.C.
The Patent and Trademark Office was represented by Joshua Waldman, U.S. Department of Justice, Washington, D.C.
Read the
Tafas v. Kappos en banc
order.
