Tafas v. Dudas et al

Filing 147

Memorandum in Support re 145 MOTION for Leave to File A Brief in Support of Plaintiffs' Anticipated Motions for Summary Judgment filed by Valspar Corporation. Associated Cases: 1:07-cv-00846-JCC-TRJ, 1:07-cv-01008-JCC-TRJ(Toof, Jackson) Modified on 12/27/2007 to reflect the link to motion #145 (klau, ).

Tafas v. Dudas et al

Doc. 147

Case 1:07-cv-00846-JCC-TRJ

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Filed 12/21/2007

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IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF VIRGINIA Alexandria Division __________________________________________ TRIANTAFYLLOS TAFAS, ) ) Plaintiffs, ) ) v. ) ) JON W. DUDAS, et al. ) ) Defendants. ) __________________________________________)

1:07cv846 (JCC/TRJ)

CONSOLIDATED WITH __________________________________________ SMITHKLINE BEECHAM CORPORATION, et al.) ) Plaintiffs, ) ) v. ) 1:07cv1008 (JCC/TRJ) ) JON W. DUDAS, et al. ) ) Defendants. ) __________________________________________) MINNESOTA AMICI MEMORANDUM IN SUPPORT OF MOTION FOR LEAVE TO FILE A BRIEF IN SUPPORT OF PLAINTIFFS' SUMMARY JUDGMENT MOTIONS The Valspar Corporation, General Mills, Inc., Donaldson Company, Inc., Ecolab Inc., and Anchor Wall Systems, Inc. ("Minnesota Amici") submit this memorandum, pursuant to Local Civil Rule 7(F)(1), in support of their motion for leave to file a brief as amici curiae in support of Plaintiffs in the above-captioned litigation. The Court previously ordered that "Any and all amici curiae who wish to file briefs in support of the parties' cross-motions for summary judgment shall file their briefs no later than Thursday, December 20, 2007"; the Court more recently moved the deadline for any brief of amicus curiae to December 27, 2007. The

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Minnesota Amici request that they be allowed to file a brief by or on December 27, as well. The five companies working together on this brief also notified the Clerk of Court by letter dated October 31, 2007, of their intention to seek leave to file an amicus brief. ARGUMENT The Court has discretion to allow non-parties such as the Minnesota Amici to participate as amici curiae, and to determine the extent and manner of participation. See Cobell v. Norton, 246 F. Supp. 2d 59, 62 (D.D.C. 2003). Such participation is appropriate when the putative amicus holds "an important interest" in the matter, and can offer "a valuable perspective that is helpful to the Court." United States v. Boeing Co., 73 F. Supp. 2d 897, 900 (S.D. Ohio 1999). The Minnesota Amici indeed would suffer a significant impact were the proposed new PTO rules enforced, and are especially qualified to illuminate the impact of the new rules for the Court. The five companies collectively submitting the proposed brief represent a cross-section of prominent innovative American companies that all rely heavily on the United States patent system to protect their investments in new technology and develop their businesses. General Mills, for example, currently has approximately 250 patent applications pending in the United States, while Donaldson Company has 200. Each of the Minnesota Amici employs in-house intellectual property counsel, and use as many as nine, in the case of General Mills for instance, outside law firms to handle their patent prosecution docket. As such, the Minnesota Amici possess a strong interest in the significant changes proposed by the PTO to the rules governing the number of patent claims and continuations allowed, and the new procedures that will be put in place, if the PTO's proposed new rules are enforced. All five companies believe that the new rules will cause substantial harm to them both in terms of several forms of new costs of doing business, and ultimately in restricting their access to the patent system.

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The Minnesota Amici would contribute to the discussion before the Court an additional perspective on the practical impact of the PTO's proposed new rules on them and presumably hundreds of other leading companies in myriad fields that rely on patent protection as part of their business plans. Current practices and software systems utilized by the Minnesota Amici and similarly-situated entities, do not allow for the owner of multiple pending patent applications to track to sorts of information necessary to alert them to when, among other things, continuation applications filed by different law firms on their behalf, may trigger the presumptions under section 1.78(f)(1) or (2), and require disclosure of the purportedly "conflicting" applications to the PTO, along with proof they do not contain "patentably indistinct" claims. Failure to do would lead to a new requirement that the patent-owner submit an elaborate an expensive examination support document, or else face the cancellation of many of its pending claims. By exceeding its authority and adding substantive restrictions to the existing legislative scheme for obtaining patents, if the proposed new rules are not enjoined, the PTO would force each company to develop new docketing systems, hire additional in-house counsel, pay for additional time from outside counsel, and ultimately could require them to consolidate prosecution in a single law firm, to avoid the consequences of the new presumptions put in place by new 37 C.F.R. §§ 1.75 & 1.78. The Minnesota Amici believe that the fuller discussion of this facet of the impact of the new rules they propose to provide with their amicus brief will help the Court more completely understand how the new rules will impermissibly constrain their entitlement under the Constitution and patent code to seek exclusive rights in their inventions. CONCLUSION For the reasons set forth above, the Minnesota Amici ask that the Court grant leave to file an amicus brief due December 27, 2007 in support of Plaintiffs' summary judgment motions.

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Date: December 21, 2007

Respectfully submitted, ________/s/________________________ Jackson D. Toof VA Bar # 48842 Arent Fox L.L.P. Counsel for Minnesota Amici 1050 Connecticut Avenue, N.W. Washington, DC 20036 Phone: [phone] Fax: [phone] [e-mail]

Of Counsel for Minnesota Amici: David P. Swenson Robins, Kaplan, Miller & Ciresi L.L.P. 2800 LaSalle Plaza 800 LaSalle Avenue Minneapolis, MN 55402-2015 Phone: [phone] Fax: [phone] [e-mail]

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CERTIFICATE OF SERVICE I hereby certify that on this 21st day of December 2007, I caused a copy of the foregoing Minnesota Amici Memorandum in Support of Motion for Leave To File A Brief In Support of Plaintiffs' Summary Judgment Motions to be filed electronically with the Clerk of the Court using the CM/ECF system, which will send a notification of such filing to the following: Elizabeth M. Locke Kirkland & Ellis LLP 655 15th Street, NW ­ Suite 1200 Washington, DC 20005 E-Mail: [e-mail] and Craig C. Reilly Richard McGettigan Reilly & West PC 1725 Duke Street ­ Suite 600 Alexandria, VA 22314 E-Mail: craig.reilly @rmrwlaw.com Counsel for GSK Plaintiffs Joseph Dale Wilson, III Kelley Drye & Warren LLP Washington Harbour 3050 K Street NW ­ Suite 400 Washington, DC 20007 E-Mail: [e-mail] Counsel for Plaintiff Tafas Lauren A. Wetzler United States Attorney's Office 2100 Jamison Ave. Alexandria, VA 22314 E-Mail: [e-mail] Counsel for Defendants

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Thomas J. O'Brien Morgan, Lewis & Bockius 1111 Pennsylvania Ave., N.W. Washington, D.C. 20004 E-Mail: to'[e-mail] Counsel for Amicus American Intellectual Property Lawyers Association Dawn-Marie Bey Kilpatrick Stockton, LLP 700 13th Street, N.W. Suite 800 Washington, D.C. 20005 E-Mail: [e-mail] Counsel for Amicus Hexas, LLC, The Roskamp Institute, Tikvah Therapeutics, Inc. James Murphy Dowd Wilmer Cutler Pickering Hale & Dorr LLP 1455 Pennsylvania Ave., N.W. Washington, D.C. 20004 E-Mail: [e-mail] Counsel for Amicus Pharmaceutical Research and Manufacturers of America Randall Karl Miller Arnold & Porter LLP 1600 Tysons Blvd., Suite 900 McLean, VA 22102 E-Mail: [e-mail] Counsel for Amici BIO and Monsanto Company Charles Gorenstein Michael K. Mutter Birch, Stewart, Kolasch & Birch, LLP 8110 Gatehouse Rd. Suite 100 East Falls Church, VA 22042 E-Mail: [e-mail] Counsel for Amicus Intellectual Property Institute of the William Mitchell College of Law

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Rebecca M. Carr Pillsbury Winthrop Shaw Pittman, LLP 2300 N Street, N.W. Washington, D.C. 20037 E-Mail: [e-mail] Counsel for Amicus Elan Pharmaceuticals, Inc.

By:___________/s/_______________________ Jackson D. Toof VA Bar # 48842 Arent Fox L.L.P. Counsel for Minnesota Amici 1050 Connecticut Avenue, NW Washington, DC 20036 Phone: [phone] Fax: [phone] [e-mail] Of Counsel for Minnesota Amici: David P. Swenson Robins, Kaplan, Miller & Ciresi L.L.P. 2800 LaSalle Plaza 800 LaSalle Avenue Minneapolis, MN 55402-2015 Phone: [phone] Fax: [phone] [e-mail]

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