CHICAGO (9/29/2010) — Never before have innovation and the business of intellectual property (IP) commercialization and licensing been more heavily relied upon to spur new business than in today’s sagging global economy. With this in mind, the Licensing Executives Society (USA & Canada), Inc., today honored companies in five industry sectors with the prestigious Deals of Distinction™ Awards for outstanding IP-based business deals undertaken in the past year.
Now in their 6th year, the Deals of Distinction™ Awards are presented to the best deals in the Chemicals, Energy, Environment and Materials Sector (CEEM); High Tech Sector; Industry-University-Government Interface (IUGI) Sector; Life Sciences Sector; and Consumer Products Sector. Here are the 2010 winners:
Dr. Triantafyllos Tafas at Jefferson Medal Award Dinner
On June 4, 2010, the New Jersey Intellectual Property Law Association presented the 2010 Jefferson Medal in honor of exceptional contributions to the field of intellectual property law to Dr. Triantafyllos Tafas and GlaxoSmithKline. For those who are unfamiliar with the Jefferson Medal, the best way to describe it is as follows; the Jefferson Medal is to Intellectual Property Law what the Heisman Trophy is to College Football. In fact, legendary giants like Judge Learned Hand, Judge Giles Sutherland Rich and Judge Howard Markey among the previous recipients, as well as renowned attorneys and certain politicians who have through the years been both knowledgeable to and sympathetic toward important intellectual property issues.
Tafas and GSK were recognized with this prestigious award for their successful legal challenge to the claims and continuations rules made final in 2007 by the United States Patent and Trademark Office. Dr. Tafas was first to file his complaint against the USPTO, which was filed the day after the final rules were announced in August 2007. The rules were not to go into effect until November 1, 2007, and for some time it seemed as if Dr. Tafas alone would take on the Patent Office. In October 2007, after previously promising to challenge the rules, GSK filed its complaint. Armed with the benefit of the Patent Office response to the Tafas complaint, GSK was able to assault the rules from another flank and with full knowledge of how the Patent Office postured itself to defend against Tafas. By challenging immediately Dr. Tafas and his attorneys (Steven Moore and James Nealon of Kelly Drye) did an enormous service for the industry and took the fight to the Patent Office. They exposed the Patent Office and in tandem with GSK were able to keep the USPTO on their heels throughout the proceedings.
Earlier today the Chief Judge Paul Michel of the United States Court of Appeals for the Federal Circuit issued an Order declaring the pending appeal of Dr. Tafas and GlaxoSmithKline moot due to the fact that USPTO Director David Kappos has withdrawn the rules. The Federal Circuit per Judge Michel, however, denied the motion of the USPTO and GlaxoSmithKline to vacate the district court opinion authored by Judge Cacheris. Most will recall that a three-judge panel had voted 2 to 1 (over the strong dissent of Judge Rader) to overrule most of Judge Cacheris’ opinion. The entire Federal Circuit decided to hear the case en banc, which was mooted by Kappos’ withdrawal of the rules. In the Order to rehear the case en banc the Federal Circuit vacated the three judge panel decision, leaving the original decision of the district court as the standing judicial decision on the rules, at least pending rehearing en banc. What this means is that the scathing indictment contained in that opinion regarding how the USPTO went about instituting the claims and continuations rules remains, as does the precedent, albeit district court precedent, standing for the proposition that the USPTO acted without authority and the claims and continuations rules directly contradicted the relevant patent statutes enacted by Congress. This should open the door for Dr. Tafas to return to the district court to make his case that he is a prevailing party and should be entitled to his attorneys fees, which was one of the points raised by his attorneys in their motion objecting to vacatur.
Late this evening attorneys representing Dr. Triantafyllos Tafas filed a Reply to Motion for Dismissal of Appeal and Request for Remand. In this filing Tafas points out that the decision made by USPTO Director David Kappos to withdraw the claims and continuations rules does moot the appeal, there is a difference between mooting an appeal and vacating an underlying district court decision. It seems clear that Dr. Tafas does not want to stand in the way of the extremely positive and responsible decision made by Kappos, but at the same time is at least a little troubled by the possibility that the underlying district court decision issued by Judge Cacheris might be erased as if it never happened. Among other things, erasing the district court decision would likely make it impossible for Tafas to make any claim for payment of his attorneys fees as a prevailing plaintiff.
GlaxoSmithKline (NYSE: GSK) today announced that it has reached agreement with the United States Patent and Trademark Office (USPTO) to join the USPTO’s motion to dismiss its litigation over Final Regulations published in August 2007 (Triantafyllos Tafas and SmithKline Beecham Corporation, SmithKline Beecham PLC and Glaxo Group Limited vs. David J. Kappos and the United States Patent and Trademark Office). GSK and the USPTO will file a joint motion with the U.S. Court of Appeals for the Federal Circuit to dismiss the litigation and to vacate the previous decision in this case by the U.S. District Court for the Eastern District of Virginia. The USPTO is withdrawing all regulations under dispute.
On Monday, July 6, 2009, the United States Court of Appeals for the Federal Circuit (minus Judge Lourie who did not participate in the poll of judges) decided to rehear the claims and continuations rule challenge of Tafas and GlaxoSmithKline en banc. Additionally, the CAFC has vacated the panel decision that awarded a victory to the USPTO. The date of oral arguments in front of the entire Federal Circuit is as yet to be determined.
The CAFC will hear the case sitting as one based on the briefs already submitted, but is providing a limited opportunity for additional briefs. The Appellant’s additional brief is due within 30 days, followed by a 20 day period within which the Appellee may then file a subsequent brief, followed by a 7 day period within which the Appellant may file a reply. Additional briefs are limited to 7,000 and any reply brief limited to 3,500 words.
What follows is the text of the Federal Circuit Order.
As soon as I learned that the date for requesting rehearing or en banc consideration of the Federal Circuit ruling in the GSK and Tafas appeal of the claims and continuations rules was pushed back to June 3, 2009, I said to myself, of course! Important things always seem to pop up while I am on the road teaching the PLI Patent Bar Review Course, which makes it particularly surprising that the Supreme Court accepted cert. in Bilski last week while I could actually write about it in a thoughtful and deliberate way. I am sitting in the back of the classroom presently listening to John White, and will take the podium myself at about 1pm local time and be teaching until about 6pm, so a detailed analysis is not something I can provide at the moment, but I wanted to at least notify folks that Tafas has requested rehearing. Notwithstanding, here are a couple paragraphs from the Tafas filing that caught my attention and start to frame the debate:
Last Thursday I wrote regarding the USPTO, GlaxoSmithKline and Dr. Tafas jointly requesting an extension of time within which to either request reconsideration or rehearing en banc of the Federal Circuit’s decision in the claims and continuations saga. This morning I learned that the Federal Circuit has granted the requested extension of time, so the parties have until the end of business on June 3, 2009 within which to move for reconsideration or rehearing en banc. My thought is that asking for an extension of time likely means that one or more of the parties will seek either reconsideration or rehearing en banc, and I cannot believe reconsideration is what is in the cards. With a case like this, with so much on the line, the three judge panel made up of Judges Rader, Bryson and Prost certainly gave the matter the full consideration it deserved. Thus, I am anticipating a request for rehearing en banc. With a matter of such great importance I would be surprised if the Federal Circuit did not want to hear this one en banc, so I suspect we will soon be Federal Circuit watching again as this dispute goes into extra innings!
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CHICAGO (9/29/2010) — Never before have innovation and the business of intellectual property (IP) commercialization and licensing been more heavily relied upon to spur new business than in today’s sagging global economy. With this in mind, the Licensing Executives Society (USA & Canada), Inc., today honored companies in five industry sectors with the prestigious Deals of Distinction™ Awards for outstanding IP-based business deals undertaken in the past year.
On Monday, July 6, 2009, the 
