Tafas v. Dudas
| Decision Date | 09 January 2008 |
| Docket Number | No. 1:07cv846 (JCC).,No. 1:07cv1008 (JCC).,1:07cv846 (JCC).,1:07cv1008 (JCC). |
| Citation | 530 F.Supp.2d 786 |
| Parties | Triantafyllos TAFAS, Plaintiff, v. Jon W. DUDAS, et al., Defendants. Smithkline Beecham Corporation, et al., Plaintiffs, v. Jon W. Dudas, et al., Defendants. |
| Court | U.S. District Court — Eastern District of Virginia |
Craig Crandall Reilly, Richard McGettigan Reilly & West PC, Alexandria, VA, Daniel Sean Trainor, Elizabeth Marie Locke, Kirkland & Ellis LLP, Washington, DC, for Smithkline Beecham Corporation, Smithkline Beecham PLC, Glaxo Group Limited.
Lauren A. Wetzler, United States Attorney's Office, Alexandria, VA, for Jon Dudas.
This matter is before the Court on Plaintiff Triantafyllos Tafas's Objection to Magistrate Jones's Opinion and Order Denying Tafas's Motion to Compel and Quashing Tafas's Notices of Depositions for Senior USPTO Officials.1 For the reasons stated below, the Court will deny Tafas's Objection.
On January 3, 2006, Defendant United States Patent & Trademark Office (the "USPTO") proposed a series of changes to the rules governing the procedure by which patent applications would be submitted to, and considered by, the USPTO. After a four month public comment period where the USPTO received more than five hundred (500) written comments, the USPTO published its Final Rules on August 21, 2007. These Final Rules were originally set to take effect on November 1, 2007. Plaintiff Triantafyllos Tafas ("Tafas") filed a Complaint in this Court on August 22, 2007, which he then amended on September 7, 2007. On October 5, 2007, the USPTO Med with this Court the nearly 10,000-page administrative record, which included the 127-page Federal Register notice that set out the Final Rules and explained their rationale.
On October 9, 2007, Plaintiff SmithKline Beecham Corporation ("GSK") Med its own Complaint against the USPTO, and that case was consolidated with Tafas's case on October 17, 2007. After extensive briefing and argument, on October 31, 2007, this Court granted GSK's motion for a preliminary injunction preventing the Final Rules from taking effect. Prior to the entry of the preliminary injunction, Tafas and the USPTO had agreed on a briefing schedule, which this Court approved in a Consent Order dated September 21, 2007. On October 22, 2007, this Court then approved an Amended Consent Order, which recognized the possibility of litigation over the adequacy or completeness of the record but did not mention a discovery period.
On November 5, 2007, Tafas noticed the depositions of four (4) USPTO officials who Tafas believed were significantly involved in the promulgation of the Final Rules: Defendant Undersecretary of Commerce Jon W. Dudas, Commissioner of Patents Jon J. Doll, Deputy Commissioner for Patent Examination John L. Love, and USPTO Senior Patent Attorney Robert Bahr. On November 9, 2007, the USPTO filed a Motion for Issuance of a Proposed Briefing Schedule in Lieu of a Standard Initial Scheduling Order in which, it demanded that summary judgment briefs be Med no later than December 20, 2007. The USPTO also asked the Court to quash Tafas's notices of deposition and to enter an order barring all discovery in this case. In response, Tafas argued that the USPTO had engaged in a biased and results-oriented rulemaking process, acted in bad faith, and withheld factual information and documents from the administrative record such that discovery concerning the USPTO's inconsistent positions and incomplete administrative record was warranted. Tafas further contended that discovery was permissible concerning his bad faith certification claim under the Regulatory Flexibility Act ("RFA") as well as on his constitutional claims.
On November 16, 2007, Magistrate Judge Jones held a hearing on the USPTO's Motion. At that hearing, Tafas argued that the USPTO had provided an incomplete administrative record and that it was improperly refusing to provide a privilege log. Magistrate Judge Jones took the matter under advisement and asked the parties to submit additional memoranda concerning the privilege issue and whether discovery should be permitted with respect to Tafas's constitutional claims. Subsequently, GSK filed a Motion for an order requiring the USPTO to submit a privilege log and a Motion to Compel a complete administrative record. Tafas, in addition to filing two supplemental memoranda, also filed a Motion to Compel on November 20, 2007, requesting that the USPTO produce all materials that were required to be placed in the administrative record and to substantiate any excisions from the record based on claims of privilege.
Magistrate Judge Jones then held another hearing on November 27, 2007. In an oral ruling from the bench, the Magistrate Judge granted the USPTO's Motion for a protective order and denied Tafas's Motion to Compel and GSK's two Motions. This oral ruling was supplemented by a written Order on November 28, 2007, in which Magistrate Judge Jones wrote that Tafas and GSK were seeking discovery in order to "go on a classic `fishing expedition.'" Magistrate Judge Jones's Mem. Op. and Order at 2. The following day, the Magistrate Judge issued an Order setting the schedule for the parties' submission of motions for summary judgment.
On December 7, 2007, Tafas filed his Objection to Magistrate Jones's Opinion and Order Denying Tafas's Motion to Compel and Quashing Tafas's Notices of Depositions for Senior USPTO Officials. This matter is currently before the Court.
Rule 72(a) of the Federal Rules of Civil Procedure permits a party to submit objections to a magistrate judge's ruling on non-dispositive matters, such as discovery orders. Fed.R.Civ.P. 72(a); 28 U.S.C. § 636(b)(1)(A); see Federal Election Comm'n v. The Christian Coalition, 178 F.R.D. 456, 459-60 (E.D.Va.1998)(citing Thomas E. Hoar, Inc. v. Sara Lee Corp., 900 F.2d 522, 525 (2d Cir.1990)). As a non-dispositive matter, the review of a magistrate's discovery order is properly governed by the "clearly erroneous or contrary to law" standard of review. See Jesselson v. Outlet Assocs. of Williamsburg, Ltd. Partnership, 784 F.Supp. 1223, 1228 (E.D.Va.1991).
Only if a magistrate judge's decision is "clearly erroneous or contrary to law" may a district court judge modify or set aside any portion of the decision. Fed.R.Civ.P. 72(a); see 28 U.S.C. § 636(b)(1)(A). A court's "finding is `clearly erroneous' when although there is evidence to support it, the reviewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed." United States v. United States Gypsum Co., 333 U.S. 364, 395, 68 S.Ct. 525, 92 L.Ed. 746 (1948); see also Harman v. Levin, 772 F.2d 1150, 1152 (4th Cir.1985). A treatise on federal practice and procedure, describes altering a magistrate's nondispositive orders as "extremely difficult to justify." 12 Charles A. Wright, Arthur R. Miller & Richard L. Marcus, Federal Practice and Procedure § 3069 (2d ed.1997). However, the same treatise admits that "although an abuse-of-discretion attitude should apply to many discovery and related matters, it need not curtail the power of the district judge to make needed modifications in the magistrate judge's directives." Id.
Tafas argues that Magistrate Judge Jones's ruling on the USPTO's Motion and Tafas's Motion to Compel was clearly erroneous and contrary to law. Tafas contends that Magistrate Judge Jones erred in: (1) not compelling the USPTO to produce all documents and information that the USPTO considered in proposing and promulgating its new rules; (2) not permitting Tafas some "reasonable latitude" to pursue additional evidence in support of his claims of bad faith; (3) not ordering that the administrative record be developed through supplementation of the record and Tafas's requested depositions; (4) not requiring the USPTO to substantiate their claims of deliberative process and attorney client privilege; and (5) precluding Tafas from taking limited and reasonable discovery in aid of his constitutional claims. The Court will address each of these arguments in turn.2
Tafas argues that Magistrate Judge Jones committed clear error by rejecting Tafas's claim that the administrative record was incomplete on its late and by denying his request for additional discovery. Tafas's Mem. of Law in Support of his Objection to Magistrate Judge Jones's Op. and Order at 9 (); Magistrate Judge Jones's Mem. Op. and Order at 2. Tafas contends that the Magistrate Judge gave undue deference to the USPTO's reliance on the "presumption of regularity," particularly in light of the fact that Tafas provided numerous examples of the "glaring holes in the administrative record where one would logically expect there to be a multitude of documents." Tafas's Mem. in Support of his Objection at 9-10. In addition, Tafas believes that Magistrate Judge Jones may have been proceeding under the improper assumption that the omission of material from an administrative record would actually be helpful to a party challenging agency action. Id. at 10.
This lawsuit is an action for judicial review of agency action under the Administrative Procedure Act ("APA"). A court must review an agency regulation promulgated pursuant to 5 U.S.C. § 553 under the "arbitrary and capricious" standard of 5 U.S.C. § 706(2)(A), where the court asks whether the agency's final decision articulates a rational connection between its factual judgments and its ultimate policy choice. Motor Vehicle Mfrs. Ass'n v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43, ...
To continue reading
Request your trial
-
Outdoor Amusement Bus. Ass'n, Inc. v. Dep't of Homeland Sec., Civil Action No. ELH-16-1015
...an agency may not exclude information on the ground that it did not 'rely' on that information in its final decision." Tafas v. Dudas, 530 F. Supp. 2d 786, 793 (E.D. Va. 2008). See, e.g., Bar MK Ranches v. Yuetter, 994 F.2d 735, 739 (10th Cir.1993) (stating that "the administrative record c......
-
Outdoor Amusement Bus. Ass'n, Inc. v. Dep't of Homeland Sec.
...agency may not exclude information on the ground that it did not 'rely' on that information in its final decision." Tafas v. Dudas, 530 F. Supp. 2d 786, 793 (E.D. Va. 2008). See, e.g., Bar MK Ranches v. Yuetter, 994 F.2d 735, 739 (10th Cir.1993) (stating that "the administrative record cons......
-
Kravitz v. U.S. Dep't of Commerce
...administrative process." NVE, Inc. v. Dep't of Health & Human Servs. , 436 F.3d 182, 195 (3d Cir. 2006) ; see also Tafas v. Dudas , 530 F.Supp.2d 786, 794 (E.D. Va. 2008) ("Because judicial review of agency action is generally limited to the administrative record, discovery is typically not......
-
Mayor & City Council of Balt. v. Trump
...agency may not exclude information on the ground that it did not ‘rely’ on that information in its final decision." Tafas v. Dudas , 530 F. Supp. 2d 786, 793 (E.D. Va. 2008) (collecting cases). But, there are cases that do not fit the mold. To accommodate those cases, courts have recognized......
-
Visual Rulemaking
...at 3, 23, 28, Am. Farm Bureau v. EPA, No. 3:15-cv-00165 (S.D. Tex. July 2, 2015). 63. 5 U.S.C. § 706. 64. See, e.g. , Tafas v. Dudas, 530 F. Supp. 2d 786, 793-94 (E.D. Va. 2008) (“[A]n agency may not exclude information on the ground that it did not ‘rely’ on that information in its inal de......
-
Expanding the Administrative Record in Administrative Procedure Act Litigation
...3d 1348, 1352 (N.D. Ga. 2016); Amfac Resorts, LLC v. U.S. Dep't of Interior, 143 F. Supp. 2d 7, 12 (D.D.C. 2001).15. Tafas v. Dudas, 530 F. Supp. 2d 786, 794 (E.D. Va. 2008).16. See Tafas v. Dudas, 530 F. Supp. 2d at 794; see also Outdoor Amusement Business Ass'n, Inc. v. Dep't of Homeland ......