Tafas v. Dudas et al

Filing 64

Response to 58 Objection filed by Jon Dudas, The United States Patent and Trademark Office. (Wetzler, Lauren)

Tafas v. Dudas et al

Doc. 64

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

Document 64

Filed 11/14/2007

Page 1 of 7

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

Civil Action No. 1:07cv846(L) (JCC/TRJ)

CONSOLIDATED WITH SMITHKLINE BEECHAM CORPORATION, et al., Plaintiffs, v. JON W. DUDAS, et al., Defendants. ) ) ) ) ) ) ) ) ) ) )

Civil Action No. 1:07cv1008 (JCC/TRJ)

DEFENDANTS' RESPONSE TO PLAINTIFF TRIANTAFYLLOS TAFAS'S OBJECTION TO DEFENDANTS' WITHDRAWAL OF ITS PARTIAL MOTION TO DISMISS BEING WITHOUT PREJUDICE Citing absolutely no legal authority, Plaintiff Triantafyllos Tafas has filed an "Objection to Defendants' Withdrawal of Its Partial Motion to Dismiss Being Without Prejudice," Dkt. No. 58, complaining that he will suffer "burden and expense" if he is required to respond at the summary judgment stage to the arguments raised in Defendant Jon Dudas and the United States Patent and Trademark Office's (the "USPTO's") withdrawn Partial Motion to Dismiss. Objection, p. 2. Dr. Tafas's objection is plainly without merit and must be overruled.

Dockets.Justia.com

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

Document 64

Filed 11/14/2007

Page 2 of 7

Dr. Tafas's argument that "[i]t would be unfair for Defendants to put Dr. Tafas through another expensive process of briefing the issues raised in the withdrawn Partial Motion to dismiss given that Dr. Tafas has been through at [sic] expensive process already" defies logic. Id. Given that Dr. Tafas's lawyers have already briefed the arguments at the motion to dismiss stage, Dr. Tafas would incur no further burden or expense from his lawyers "cutting and pasting" those same arguments into a summary judgment brief. Dr. Tafas simply will not be prejudiced by the USPTO's withdrawal of its motion. In any event, the USPTO cannot be barred from later raising again its jurisdictional challenges to standing and ripeness. See Def. Partial Motion to Dismiss, Dkt. Nos. 17, 18. It is firmly established that arguments concerning lack of subject matter jurisdiction cannot be waived and may be raised by a party or the court itself at any stage of proceedings. United States v. Cotton, 535 U.S. 625, 630 (2002) ("Subject-matter jurisdiction, because it involves the court's power to hear a case, can never be forfeited or waived."); Fed. R. Civ. P. 12(h)(3). Moreover, as Dr. Tafas himself observed in "Plaintiffs' Memorandum in Opposition to Defendants' Partial Motion to Dismiss," Dkt. No. 31, a different amount of evidentiary proof is required to establish standing at the motion to dismiss and motion for summary judgment stages. Id. at 4 (citing Bennett v. Spear, 520 U.S. 154, 168 (1997); Lujan v. Defenders of Wildlife, 504 U.S. 555, 561 (1992)). Thus, even assuming arguendo that Dr. Tafas sufficiently established standing at the motion to dismiss stage by responding to the USPTO's Partial Motion to Dismiss with a declaration that addressed some of the jurisdictional defects in his amended complaint, see Dkt. No. 31-2, the USPTO would still be allowed to challenge whether he had met his burden to establish standing at the summary judgment stage. See, e.g., Mgmt. Ass'n for Private Photogrammetric Surveyors v. United States, 492 F. Supp. 2d 540, 542 (E.D. Va. 2007) (granting 2

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

Document 64

Filed 11/14/2007

Page 3 of 7

summary judgment on grounds of lack of standing after denying motion to dismiss on standing grounds). Even as to the non-jurisdictional arguments in the USPTO's Partial Motion to Dismiss, Dr. Tafas points to absolutely no authority suggesting that arguments made by a party but withdrawn before a Court rules on them may never be raised again. Such authority appears not to exist. In fact, even if this Court had ruled upon and rejected the merits of the USPTO's arguments, which it did not, the USPTO could still raise its arguments again at the summary judgment stage, albeit facing an uphill battle in convincing the Court to change course. In the end, the USPTO's withdrawal of its Partial Motion to Dismiss reflects the seachange that occurred in the posture of this case between the time the USPTO filed its Partial Motion to Dismiss on October 4, 2007 and when it withdrew its motion on November 5, 2007. In this one month span, the case went from a single suit by a solo inventor who agreed not to seek a preliminary injunction, to a consolidated suit involving the second largest pharmaceutical company in the world, which succeeded in having this Court preliminarily enjoin the USPTO's final rules concerning claims and continuations practice. See generally, SmithKline Beecham Corp. et al. v. Dudas, 1:07cv1008, Dkt. Nos. 1-65. In the face of this dramatic shift, as well as a nearly forty-page Memorandum Opinion by this Court setting out its preliminary views on the Final Rules, see 1:07cv1008, Dkt. No. 64, the USPTO cannot be faulted for wanting to reevaluate its arguments for dismissal before asking this Court to pass on them. There is simply no basis for preventing the USPTO from later raising any of its arguments at the summary judgment stage.

3

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

Document 64

Filed 11/14/2007

Page 4 of 7

Respectfully submitted, CHUCK ROSENBERG UNITED STATES ATTORNEY

By:

/s/ LAUREN A. WETZLER RALPH ANDREW PRICE JR. R. JOSEPH SHER Assistant United States Attorneys Attorneys for All Defendants Justin W. Williams U.S. Attorney's Building 2100 Jamieson Avenue Alexandria, Virginia 22314 Tel: [phone] Fax: [phone] [e-mail]

OF COUNSEL: James A. Toupin General Counsel Stephen Walsh Acting Deputy General Counsel and Solicitor William Covey Deputy General Counsel William G. Jenks Janet A. Gongola William LaMarca Associate Solicitors Jennifer M. McDowell Associate Counsel United States Patent and Trademark Office

4

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

Document 64

Filed 11/14/2007

Page 5 of 7

CERTIFICATE OF SERVICE I hereby certify that on November 14, 2007, I electronically filed the foregoing with the Clerk of the Court using the CM/ECF system, which will send a notification of such filing (NEF) to the following: Joseph Dale Wilson, III Kelley Drye & Warren LLP Washington Harbour 3050 K Street NW Suite 400 Washington, DC 20007 Email: [e-mail] Joanna Elizabeth Baden-Mayer Collier Shannon & Scott PLLC 3050 K St NW Suite 400 Washington, DC 20007-5108 E-mail: [e-mail] Counsel for Plaintiff Triantafyllos Tafas, 1:07cv846 Elizabeth Marie Locke Kirkland & Ellis LLP 655 15th St NW Suite 1200 Washington, DC 20005 Email: [e-mail] Craig Crandell Reilly Richard McGettigan Reilly & West PC 1725 Duke St Suite 600 Alexandria, VA 22314 Email: [e-mail] Daniel Sean Trainor Kirkland & Ellis LLP 655 15th St NW Suite 1200 Washington, DC 20005 Email: [e-mail]

5

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

Document 64

Filed 11/14/2007

Page 6 of 7

Counsel for Plaintiffs SmithKline Beecham Corp. d/b/a GlaxoSmithKline, SmithKline Beecham PLC, and Glaxo Group Limited, d/b/a GlaxoSmithKline Thomas J. O'Brien Morgan, Lewis & Bockius 1111 Pennsylvania Ave, NW Washington, DC 20004 Email: to'[e-mail] Counsel for Amicus American Intellectual Property Lawyers Association Dawn-Marie Bey Kilpatrick Stockton LLP 700 13th St NW Suite 800 Washington, DC 20005 Email: [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 NW Washington, DC 20004 Email: [e-mail]

Counsel for Putative Amicus Pharmaceutical Research and Manufacturers of America Randall Karl Miller Arnold & Porter LLP 1600 Tysons Blvd Suite 900 McLean, VA 22102 Email: [e-mail] Counsel for Putative Amicus Biotechnology Industry Organization Rebecca M. Carr Pillsbury Winthrop Shaw Pittman, LLP 2300 N Street, NW Washington, DC 20037 [e-mail] Scott J. Pivnick 6

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

Document 64

Filed 11/14/2007

Page 7 of 7

Pillsbury Winthrop Shaw Pittman 1650 Tysons Boulevard McLean, Virginia 22102-4856 [e-mail] Counsel for Amicus Elan Pharmaceuticals, Inc. /s/ LAUREN A. WETZLER Assistant United States Attorney Justin W. Williams U.S. Attorney's Building 2100 Jamieson Avenue Alexandria, Virginia 22314 Tel: [phone] Fax: [phone] [e-mail] Counsel for All Defendants

7