Tafas v. Dudas et al

Filing 80

MOTION to Compel by Triantafyllos Tafas. (Wilson, Joseph)

Tafas v. Dudas et al

Doc. 80

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

Document 80

Filed 11/20/2007

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UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF VIRGINIA (Alexandria Division)

TRIANTAFYLLOS TAFAS, Plaintiff, v. JON W. DUDAS, in his official capacity as UnderSecretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, and the UNITED STATES PATENT AND TRADEMARK OFFICE, Defendants. CIVIL ACTION: 1:07cv846 (JCC/TRJ) and Consolidated Case (below)

SMITHKLINE BEECHAM CORPORATION, Plaintiff, v. JON W. DUDAS, in his official capacity as UnderSecretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, and the UNITED STATES PATENT AND TRADEMARK OFFICE, Defendants.

PLAINTIFF DR. TAFAS' MOTION TO COMPEL Plaintiff Dr. Triantafyllos Tafas, by undersigned counsel Kelley Drye & Warren LLP, respectfully requests that the Court issue an order compelling Defendants Jon W. Dudas and the United States Patent and Trademark Office to furnish a privilege log identifying any and all documents and information withheld or redacted from the administrative record Defendants produced in this consolidated action based on any claim of any privilege or protection from disclosure and to include in the administrative record any and all non-privileged documents and materials that were considered or reviewed in connection with the proposed and final patent rules that are subject of this action. The grounds for this relief were set forth by Dr. Tafas' counsel

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during the hearing in this consolidated action on November 16th and in Dr. Tafas' Supplemental Memorandum Addressing Need for Defendants to Furnish a Privilege Log Concerning Matter Withheld from the Administrative Record Based on Privilege (Dckt. # 73). WHEREFORE, for all the foregoing reasons, as well as those set forth by Dr. Tafas' counsel at the November 17, 2007 hearing and in Dr. Tafas' Supplemental Memorandum Addressing Need for Defendants to Furnish a Privilege Log Concerning Matter Withheld from the Administrative Record Based on Privilege, the Court should grant this Motion, and order Defendants Jon W. Dudas and the United States Patent and Trademark Office to furnish a privilege log identifying any and all documents and information withheld or redacted from the administrative record Defendants produced in this consolidated action based on any claim of any privilege or protection from disclosure and to include in the administrative record any and all documents and materials that were considered or reviewed in connection with the proposed and final patent rules that are subject of this action. A proposed Order is attached hereto. Local Rule 37(E) Statement. Pursuant to Local Rule 37(E), counsel for Dr. Tafas certifies that it has conferred in good faith negotiations with counsel for Defendants in an attempt to resolve this dispute through letters and in person conversations, but have been unable to reach an agreement on the issues noted herein.

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Respectfully submitted, ____/s/ Joseph D. Wilson___________ Joseph D. Wilson (VSB # 43693) Steven J. Moore, Esq. (pro hac vice) James E. Nealon, Esq. (pro hac vice) KELLEY DRYE & WARREN LLP Washington Harbor, Suite 400 3050 K Street, NW Washington, DC 20007 Telephone: [phone] Facsimile: [phone] E-mail: [e-mail] Counsel for Plaintiff Triantafyllos Tafas Of Counsel: William R. Golden Jr., Esq. KELLEY DRYE & WARREN LLP 101 Park Avenue New York, New York 10178-0002 Telephone: [phone] Facsimile: [phone] E-mail: [e-mail] [e-mail] [e-mail] David Frulla, Esq. Shaun Gehan, Esq. (pro hac vice) KELLEY DRYE & WARREN LLP Washington Harbor, Suite 400 3050 K Street, NW Washington, DC 20007 Telephone: [phone] Facsimile: [phone] Email: [e-mail] [e-mail] Dated: November 20, 2007

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UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF VIRGINIA (Alexandria Division)

TRIANTAFYLLOS TAFAS, Plaintiff, v. JON W. DUDAS, in his official capacity as UnderSecretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, and the UNITED STATES PATENT AND TRADEMARK OFFICE, Defendants. CIVIL ACTION: 1:07cv846 (JCC/TRJ) and Consolidated Case (below)

SMITHKLINE BEECHAM CORPORATION, Plaintiff, v. JON W. DUDAS, in his official capacity as UnderSecretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, and the UNITED STATES PATENT AND TRADEMARK OFFICE, Defendants.

[PROPOSED] ORDER GRANTING PLAINTIFF DR. TAFAS' MOTION TO COMPEL Upon consideration of the Motion by Plaintiff Dr. Tafas' to Compel, the arguments raised by the parties in their briefs and during oral argument, and the entire record in this case, and having found good cause, it is this______ day of_____________, 2007, ORDERED that the aforesaid Motion is GRANTED; and IT IS FURTHER ORDERED that Defendants Jon W. Dudas and the United States Patent shall office shall furnish a privilege log to Plaintiffs in this action separately identifying any and all documents and information withheld or redacted from the administrative record that Defendants produced in this consolidated action based on any claims of any privilege or

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protection from disclosure and otherwise comporting with the requirements of Federal Rule of Civil Procedure 26(b)(5)(A) by___________________________________________; and IT IS FURTHER ORDERED that Defendants Jon W. Dudas and the United States Patent Office shall include in the administrative record any and all non-privileged documents and materials that were reviewed and considered, either directly or indirectly, in connection with the proposed and final patent rules that are subject of this action no later than _____________________________. . _________________________________ Judge, United States District Court For The Eastern District of Virginia

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CERTIFICATE OF SERVICE I hereby certify that on November 20, 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: Elizabeth Marie Locke Kirkland & Ellis LLP 655 15th Street, NW Suite 1200 Washington, DC 20005 Email: [e-mail] Craig Crandell Reilly Richard McGettingan Reilly & West PC 1725 Duke Street Suite 600 Alexandria, VA 22314 Email: [e-mail] Daniel Sean Trainor Kirkland & Ellis LLP 655 15th Street, NW Suite 1200 Washington, DC 20005 Email: [e-mail] 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 Avenue, NW Washington, DC 20004 Email: to'[e-mail] Counsel for Putative Amicus American Intellectual Property Lawyers Association Dawn-Marie Bey Kilpatrick Stockton LLP 700 13th Street NW Suite 800 Washington, DC 20005 Email: [e-mail] Counsel for Putative Amicus Hexas, LLC, The Roskamp Institute, Tikvah Therapeutics, Inc. James Murphy Dowd Wilmer Cutler Pickering Hale & Dorr LLP 1455 Pennsylvania Avenue 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 Pillsbury Winthrop Shaw Pittman 1650 Tysons Boulevard McLean, Virginia 22102-4856 [e-mail] Counsel for Putative Amicus Elan Pharmaceuticals, Inc. Lauren A. Wetzler Assistant United States Attorney Justin W. Williams U.S. Attorney's Building 2100 Jamieson Avenue Alexandria, Virginia 22134 Tel: [phone] Fax: [phone] [e-mail] Counsel for All Defendants

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___/s/ Joseph D. Wilson___________ Joseph D. Wilson (VSB # 43693) KELLEY DRYE & WARREN LLP Washington Harbor, Suite 400 3050 K Street, NW Washington, DC 20007 Telephone: [phone] Facsimile: [phone] E-mail: [e-mail] Counsel for Plaintiff Triantafyllos Tafas

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