## United States Court of Appeals for the Federal Circuit

2008-1352

TRIANTAFYLLOS TAFAS, Plaintiff-Appellee, and SMITHKLINE BEECHAM CORPORATION ( doing business as GlaxoSmithKline), SMITHKLINE BEECHAM PLC, and GLAXO GROUP LIMITED (doing bus iness as GlaxoSmithKline), Plaintiffs-Appellees,

v.

DAVID J. KAPPOS, Under Se cretary of Commerce for Intellectual Property and Director of the Un ited States Patent and Trademark Office,

and UNITED STATES PATENT A ND TRADEMARK OFFICE. Defendants-Appellants.

Appeal from United States Dis trict Court for the Eastern District of Virginia in consolidated case nos. 1:07-CV-846 and 1:07-CV-1008, Senior Judge James C. Cacheris. Before MICHEL, Chief Judge , NEWMAN, MAYER, RADER, BRYSON, GAJARSA, LINN, DYK, PROST, and MOORE, Circuit Judges

. 1 MICHEL, Chief Judge

. O R D E R Plaintiffs-Appellees Smit hKline Beecham Corp., Smit hKline Beecham PLC, and Glaxo Group Limited (collect ively “GlaxoSmithKline”) and Defendants-Appellants David

1 Circuit Judge LOURIE took no part in the consideration of this case.J. Kappos and the U.S. Patent and Trademark Office (“USPTO”) (collectively “Kappos”) have filed a joint motion for dismissal of the appeal and to vacate the judgment of the district court below. Plaintiff-Appellee Triant afyllos Tafas has filed a response, joining in GlaxoSmithKline and Kappos’ join t motion for dismissal of the appeal, but opposing the joint motion for vacatur. For the reasons set forth below, the joint motion for dismissal of the appeal is granted, and the joint motion for vacatur of the district court’s judgment is denied. The parties’ joint motion for dismissa l of the appeal is proper because the USPTO has rescinded the rules that formed the basis of this litigat ion. The appeal is therefore moot and dismissal of the appeal is not only appropriate, but required. However, vacatur of the district court’s judgm ent is inappropriate under the circumstances. In U.S. Bancorp Mortgage Co. v. Bonner Mall Partnership , 513 U.S. 18 (1994), the Supreme Court held t hat 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 exte rnal causes over which the parties have no control, or from the unilateral act of t he prevailing party, but not when the mootness is due to a voluntary act by the losing party, such as a settlement. U.S. Bancorp Mortgage Co. , 513 U.S. at 25. 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 stat utory change; instead, it is a case in which the agency itself has voluntarily withdr awn the regulations and thus set the stage for a declaration of mootness. The motion’s st atement that an intervening r egulatory change is directly

2008-1352 - 2 -2008-1352 - 3 - analogous to an intervening st atutory change is not persuas ive. 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 distri ct court action) that acted unilaterally to render the case moot, and vacatur is not appropriate. Accordingly, IT IS ORDERED THAT: (1) The parties’ joint motion for di smissal of the appeal is granted. (2) The joint motion of GlaxoSmithKli ne and Kappos to vacate the district court’s grant of summary judgment and injunction of enforcement of the rescinded rules is denied.

FOR THE COURT November 13, 2009 /s/ Paul R. Michel Date Paul R. Michel Chief Judge cc: Steven J. Moore, Esq. Joshua Waldman, Esq. F. Christopher Mizzo. Esq. Jeffrey Bossert Clark, Esq. All Amici counsel