Amicus Curiae Brief — KSR Intern. Co. v. Teleflex Inc.

Supreme Court brief2007

Ask Donna

What actually matters in this document.

Text

{OTION FILED

MAY 1 2 2005 (3)

No. 04-1350

IN THE

Supreme Court of the United States

KSR INTERNATIONAL Co.,

Petitioner,

TELEFLEX INC. and

TECHNOLOGY HOLDING Co.,

Respondents.

On Petition For Writ of Certiorari to

the United States Court of Appeals

for the Federal Circuit

MOTION FOR LEAVE TO Hy AMICUS CURIAE BRIEF

BRIEF OF TWENTY-FOUR INTELLECTUAL PROPERTY

LAW PROFESSORS AS AMICI CURIAE

IN SUPPORT OF PETITIONER

KATHERINE J. STRANDBURG ROBERT BRAUNEIS*

Assistant Professor of Law Associate Professor of Law

DEPAUL UNTVERSITY THE GEORGE WASHINGTON

COLLEGE OF LAW UNIVERSITY LAW SCHOOL

25 East Jackson Boulevard 2000 H Street, NW

Chicago, IL 60604 Washington, DC 20052

(312) 362-8536 (202) 994-6138

*Counsel of Record for Amici

Curiae

(List of Amici Curiae continues on inside cover)

——_—

MARGO BAGLEY

Associate Professor of Law

EMORY UNIVERSITY

SCHOOL OF LAW

1301 Clifton Road

Atlanta, GA 30322

JAMES BESSEN

Lecturer in Law

BOSTON UNIVERSITY

SCHOOL OF LAW

765 Commonwealth Avenue

Boston, MA 02215

MICHAEL A. CARRIER

Associate Professor of Law

RUTGERS UNIVERSITY SCHOOL OF

LAW - CAMDEN

217 North Fifth Strect

Camden, NJ 08102

ROCHELLE COOPER DREYFUSS

Pauline Newman Professor of

Law

NEW YORK UNIVERSITY

SCHOOL OF LAW

40 Washington Square South

New York, NY 10012

CHRISTINE HAIGHT FARLEY

Associate Professor of Law

AMERICAN UNIVERSITY

WASHINGTON COLLEGE OF LAW

4801 Massachusetts Avenue, NW

Washington, DC 20016

CYNTHIA M. Ho

Associate Professor of Law

and Vickrey Research

Professor

LOYOLA UNIVERSITY CHICAGO

SCHOOL OF LAW

One East Pearson Street

Chicago, IL 60611

TIMOTHY R. HOLBROOK

Assistant Professor of Law

CHICAGO-KENT

COLLEGE OF LAW

565 W. Adams St.

Chicago, IL 60661

PETER JASZI

Professor of Law

AMERICAN UNIVERSITY

WASHINGTON COLLEGE OF LAW

4801 Massachusetts Avenue, NW

Washington, DC 20016

JAY P. KESAN

Professor of Law

UNIVERSITY OF ILLINOIS

COLLEGE OF LAW

504 East Pennsylvania Avenue

Champaign, IL 61820

MARK A. LEMLEY

William H. Neukom

Professor of Law

STANFORD LAW SCHOOL

Crown Quadrangle

Stanford, CA 94305

GLYNN S. LUNNEY, JR.

Professor of Law

TULANE UNIVERSITY

SCHOOL OF LAW

Weinmann Hall

6329 Freret Street

New Orleans, LA 70118-6231

RONALD J. MANN

Ben H. & Kitty King Powell

Chair in Business &

Commercial Law

UNIVERSITY OF TEXAS SCHOOL

OF LAW

727 E. Dean Keeton Street

Austin, TX 78705

ROBERT P. MERGES

Wilson Sonsini Goodrich &

Rosati Professor of Law

and Technology

BOALT HALL SCHOOL OF LAW

UNIVERSITY OF CALIFORNIA,

BERKELEY

Berkeley, CA 94720

KIMBERLY A. MOORE

Professor of Law

GEORGE MASON UNIVERSITY

SCHOOL OF LAW

3301 Fairfax Drive

Arlington, VA 22201

JANICE M. MUELLER

Professor of Law

UNIVERSITY OF PITTSBURGH

SCHOOL OF LAW

3900 Forbes Avenue

Pittsburgh, PA 15260

JOSEPH SCOTT MILLER

Associate Professor of Law

LEwis & CLARK LAW SCHOOL

10015 S.W. Terwilliger Blvd.

Portland, Oregon 97219

CRAIG A. NARD

Professor of Law

CASE WESTERN RESERVE

UNIVERSITY SCHOOL OF LAW

11075 East Blvd.

Cleveland, OH 44106

MALLA POLLACK

Visiting Professor

UNIVERSITY OF IDAHO

COLLEGE OF LAW

6” & Rayburn

Moscow, ID 83843

ARTI K. RAI

Professor of Law

DUKE LAW SCHOOL

PAMELA SAMUELSON

Chancellor's Professor of Law

BOALT HALL SCHOOL OF LAW

UNIVERSITY OF CALIFORNIA,

BERKELEY

Berkeley, CA 94720

JOSHUA SARNOFF

Practitioner-in-Residence

AMERICAN UNIVERSITY

WASHINGTON COLLEGE OF LAW

4801 Massachusetts Avenue, NW

Washington, DC 20016

JOHN R. THOMAS

Professor of Law

GEORGETOWN UNIVERSITY LAW

CENTER

600 New Jersey Avenue, NW

Washington, DC 20001

aA. ‘ SaaN seep

eb: -

7 ~

Vian ean

peas: eome eos

i. wat

“AMET:

ws , -.

: ; y ; a, 3 pera finite

+ Tit oes ; cole ae aoe

si Rica ae oes Uae! eee ae eM

MOTION FOR LEAVE TO FILE AMICUS BRIEF

Pursuant to Rule 37.3(b) of the Rules of the Supreme Court

of the United States, Robert Brauneis, Katherine Strandburg,

Margo Bagley, James Bessen, Michael A. Carrier, Rochelle

Cooper Dreyfuss, Christine Haight Farley, Cynthia M. Ho,

Timothy R. Holbrook, Peter Jaszi, Jay P. Kesan, Mark A.

Lemley, Glynn S. Lunney, Jr., Ronald J. Mann, Robert P.

Merges, Kimberly A. Moore, Janice M. Mueller, Joseph

Scott Miller, Craig A. Nard, Malla Pollack, Arti K. Rai,

Pamela Samuelson, Joshua Sarnoff, and John R. Thomas

(collectively “Twenty-Four Intellectual Property Law Profes-

sors”) hereby request leave to file the accompanying amicus

curiae brief. This brief is submitted in support of the petition

for writ of certiorari to the Court of Appeals for the Federal

Circuit. Petitioner KSR International Co. has consented to

the filing of this brief. Respondents Teleflex Inc. and Tech-

nology Holding Co. have not consented.

As set forth in the accompanying brief, the Twenty-Four

Intellectual Property Law Professors teach and write about

intellectual property at twenty different law schools within

the United States, and have a deep interest in the proper

interpretation and application of intellectual property law.

The Twenty-Four Intellectual Pronerty Law Professors are

greatly concerned that the Federal Circuit’s incorrect inter-

pretation of the obviousness standard of Section 103 of the

Patent Act, 35 U.S.C. §103, results in unnecessary and

socially costly grants of patent rights on obvious extensions

of existing technologies. Accordingly, the Twenty-Four

Intellectual Property Law Professors respectfully request

leave to file the accompanying amicus curiae brief.

Respectfully submitted,

Robert Brauneis

Counsel of Record for

Twenty-Four Intellectual Property Law Professors

ets

ny 2. .

*ao -

—

we |

rok

co Re

nts

—<%

~ “

pr a

oo ° .

‘

~~.

‘

5 2

seek ae

eit

sia

ean

‘ned

‘

any,

ee ae

« is

sal]

- ~ -

Cer

e..

ie oe “ae Fd :

ao 1} MES

TABLE OF CONTENTS

pg ER re

TABLE OF AUTHIORIT TES. ............:.0::.ccccssscessseesesess

INTGREST OF AMICI CURIAE................ccccceseeeeeees

REASONS FOR GRANTING THE WRIT ...............

I. The Federal Circuit's Rule that Patent Obvi-

ousness Can Be Shown Only By Producing a

“Teaching, Suggestion, or Motivation” to

Combine Prior Art Is Contrary to the Approach

Mandaied by Statute and Inconsistent with this

Il. The Federal Circuit's “Suggestion Test” Sets

Ill. This Case is an Excellent Vehicle for Address-

ing the Conflict Between this Court’s Prece-

dent and the Federal Circuit's “Suggestion

- 10

TABLE OF AUTHORITIES

Page

Cases:

ACS Hospital Systems, Inc. v. Montefiore Hos-

pital, 732 F.2d 1572 (Fed. Cir. 1984)................cccccceecceeee 4

Anderson's-Black Rock v. Pavement Co., 396

ee eT ED 4

Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,

| REEFS EC oy ae 3

Brown & Williamson Tobacco Corp. v. Philip

Morris Inc., 229 F.3d 1120 (Fed. Cir. 2000)................. 15

C.R. Bard, Inc. v. M3 Systems, 157 F.3d 1340

ee ee ce ee 15

In re Dembiczak, 175 F.3d. 994 (Fed. Cir.

TSE eee ee wee ae a” Ove ENT 14

Dickinson v. Zurko, 527 U.S. 150 (1999) .00.....ccccccccccceceeeeee 8

Dann v. Commissioner, 425 U.S. 219 (1976)................000. 5

In re Geiger, 815 F.2d 686 (Fed. Cir. 1987) ...................... 4

Graham \'. John Deere, 383 U.S. | (1966).... 3, 4, 5,6, 7,9

Hilton Davis Chemical Co. v. Warner-

Jenkinson Co., Inc., 62 F.3d 1512 (Fed. Cir.

Holmes Group, Inc. v. Vornado Air Circula-

tions Sys., Inc., 535 U.S. 826 (2002) ..........cccccccceceeeereees 17

iil

TABLE OF AUTHORITIES—Continued

John Zink Co. v. National Airoil Burner Co.,

613 F.2d $47 (Sth Cir. 1980).................cccccsseseserees

Karsten Mfg. Corp. v. Cleveland Golf Co., 242

In re Kotzab, 217 F.3d 1365 (Fed. Cir. 2000)..........

In re Lee, 277 F.3d 1338 (Fed. Cir. 2002) ...............

Miltimore Sales, Inc. v. International Rectifier,

Inc., 119 Fed. Appx. 697 (6™ Cir. 2004)...............

In re Oetiker, 977 F.2d 1443 (Fed. Cir. 1992).........

Pro-Mold and Tool Co., Inc. v. Great Lakes

Plastics, Inc., 75 F.3d 1568 (Fed. Cir. 1996)........

In re Raynes, 7 F.3d 1037 (Fed. Cir. 1993)..............

Sakraida v. Ag Pro, Inc., 425 U.S. 273 (1976).........

In re Sang Su Lee, 277 F.3d 1338 (Fed. Cir.

i EELS RELI a RT ae,

TABLE OF AUTHORITIES—Continued

Page

Teleflex, Inc. v. Ficosa North America Corp.,

ee 17

United States v. Adams, 383 U.S. 39 (1965) ............0cc00000+ 3

Vulcan Engineering Co., Inc. v. Fata Alumin-

ium, Inc., 278 F.3d 1366 (Fed. Cir. 2002)..............0.2-+. 15

Winner International Royalty Corp. v. Wang,

202 F.3d 1340 (Fed. Cir. 2000).............cccsecsseseeerereeenees 15

Constitution and Statutes:

Oe 0 ee ee 10

BP IS sacsinerctasisecescnapennisanaiinttanitbinmmatipesicesisidlipn 2

FF ae Si enectrsranitcesemaresienstcintennsbinaiteintonamsiantiagiannings 2

FP sn Ca ctinticecencptasesesecencetnienenenaciemtnataboriee 2, 3, 5,6

Legislative Materials:

Ba es SE, es GE ED ccirictrrcecssesnmenrsnntoprammpmesians 4

©, Deep. Dee, GB-RO PP COI cence 4

TABLE OF AUTHORITIES—Continued

Page

Other:

Margo A. Bagley, E-Commerce and Equiva-

lence: Defining the Proper Scope of Internet

Patents, 7 Mich. Telecomm. & Tech. L. Rev.

SEITE siorneeincrsinshivistipntstatnetiaiiicsiaistniedaimmeniinies 12

John H. Barton, Non-Obviousness, 43 IDEA

I ieicertcidiulnitncalidplistiaineinmesincinmeiniiitcaditdatiasiasss 13

Dan L. Burk & Mark Lemley, /s Patent Law

Technology-Specific?, 17 Berkeley Tech. L.J.

SEE Ce iviinitiesininennicneninisianigsinnitadincaapnperemtnnisnanes 12

John F. Duffy, Rethinking the Prospect Theory

of Patents, 71 U. Chi. L. Rev. 439 (2004) ....0.0..2...2-0... 17

John F. Duffy, Harmony and Diversity in

Global Patent Law, 17 Berkeley Tech. L. J.

RTE STE RES TD ae OID as ee oO 17

John F. Duffy, The Festo Decision and the

Return of the Supreme Court to the Bar of

Patents, 2002 Sup. Ct. Rev. 273 .......cccccesscsorescssesseeseoses 17

John F. Duffy, On Improving the Legal Proc-

ess of Claim Construction: Administrative

TABLE OF AUTHORITIES—Continued

Alternatives, 2 Wash U. J. L. & Pol’y 109

UE cccnsentscnsenese~centenninennengiandensipatanssateepienatacsecnaies

Rebecca ~ Eisenberg, Obvious to Whom?

Evaluating Inventions from the Perspective

of PHOSITA, 19 Berkeley Tech. LJ. 885

ITIP UD ccccssencccentcenssepeqennateonsesesnnencavapeiiccanmasusnansnetes

Federal Trade Commission, To Promote Inno-

vation: The Proper Balance of Competition

and Patent Law and Policy (2003)..........s0c-000000++

Bronwyn H. Hall and Dietmar Harhoff, Post-

Grant Reviews in the U.S. Patent System —

Design Choices and Expected Impact, 19

Berkeley Tech. L.J. 989 (2004)............cccccsesseeeseeees

Michael A. Heller & Rebecca S. Eisenberg,

Can Patents Deter Innovation? The Anti-

commons in Biomedical Research, Science,

aac NI a

Glynn S. Lunney, Jr., E-Obviousness, 7 Mich.

Telecomm. Tech. L. Rev. 363 (2000)...................

Robert P. Merges, Uncertainty and the Stan-

dard of Patentability, 7 High Tech. L. J. 1

CRD ccccescsnsssasersccnsensancenqeqscnnsibedevnnemnacesqaasnnnnsonnnss

vii

TABLE OF AUTHORITIES—Continued

Page

Robert Patrick Merges & John Fitzgerald

Duffy, Patent Law and Policy: Cases and

ee Gr Gi ee itirrctetincenicnncitenttniatatninnnnmsnene 17

National Research Council, A Patent System

Se ee ichicnceneseiitiidudniisindiaiiioiunminden 11

Arti K. Rai, Allocating Power over Fact-

Finding in the Patent System, 19 Berkeley

Ss ae Bik Se Ce intercrnnecereniitepaitsinnpinimastsipereeaseestecs 8

Jerome R. Ravetz, Scientific Knowledge and its

I ON CIT Ei inhenicnnitninccdiitiastetiiddigtenssneatateniintnes 11

Giles S. Rich, The Principles of Patentability,

42 J. Pat. Off. Soc’y 75 (1960)..........:sccccesecseeeseresereseneees 3

Carl Shapiro, Navigating the Patent Thicket:

Cross Licensing, Patent Pools, and Standard

Setting, in Innovation Policy and the Econ-

omy (Adam Jaffe et al., eds., 2001) ..........::cccccecceeeeeerees 13

John R. Thomas, Formalism at the Federal

Circuit, 52 Am. L. Rev. 771 (2003)..........:c0ceccceeeeeeeeeeee 1]

INTEREST OF THE AMICI CURIAE

Amici Curiae Robert Brauneis, Katherine Strandburg,

Margo Bagley, James Bessen, Michael A. Carrier, Rochelle

Cooper Dreyfuss, Christine Haight Farley, Timothy R.

Holbrook, Peter Jaszi, Jay P. Kesan, Mark A. Lemley, Glynn

S. Lunney, Jr., Ronald J. Mann, Robert P. Merges, Kimberly

A. Moore, Janice M. Mueller, Joseph Scott Miller, Craig A.

Nard, Malla Pollack, Arti K. Rai, Pamela Samuelson, Joshua

Sarnoff and John R. Thomas (collectively “Twenty-Four

Intellectual Property Law Professors”) respectfully submit

this brief in support of petitioner, KSR International Co., —

encouraging the grant of a wnt of certiorari to review the

judgment of the United States Court of Appeals for the

Federal Circuit, because that judgment stems from the

application of an obviousness test that is inconsistent with the

patent statute, with this Court’s precedent, and with good

patent policy.’

Amici are law professors who teach and write about intel-

lectual property at twenty different law schools within the

United States and have an interest indhe proper interpretation

and application of intellectual property law. Amici believe

that patent law should provide incentives to search for truly

new technological solutions. In contrast, the Federal Cir-

cuit’s incorrect interpretation of the obviousness standard, as

applied in this case, provides incentives for seeking patent

rights on obvious extensions of existing technologies. The

patenting of obvious extensions of existing technologies has

high social costs and is contrary to the Constitutional purpose

of the patent system.

! Pursuant to this Court’s Rule 37.6, amici represent that this brief was

not authored in whole or in part by counsel for any party, and that no

person or entity other than amici and their respective educational

institutions has made a monetary contribution to the preparation or

submission of this brief. The names of the educational in:.itutions are

provided for identufication purposes only.

This case provides the Court with an opportunity to over-

turn the Federal Circuit’s much-criticized current approach to

non-obviousness, which is at odds with the statutory lan-

guage, inconsistent with this Court’s precedent, and contrary

to the goals of the patent system. Unless this Court inter-

venes, countless applications and issued patents on obvious

technologies will continue to burden the U.S. Patent and

Trademark Office, the federal courts, and the public at large.

REASONS FOR GRANTING THE WRIT

I. The Federal Circuit’s Rule that Patent Obviousness

Can Be Shown Only By Producing a “Teaching, Sug-

gestion, or Motivation” to Combine Prior Art Is Con-

trary to the Approach Mandated by Statute and In-

consistent with this Court’s Precedent.

To implement the core patent policy of granting patents

only on significant advances in knowledge, Congress chose a

standard embodied in Section 103 of the Patent Act, which

denies patent protection when “the subject matter as a whole

would have been obvious at the time the invention was made

to a person having ordinary skill in the art to which said

subject matter pertains.” 35 U.S.C. §103. The Court of

Appeals for the Federal Circuit has developed a different, and

lower, standard. Rather than focus on what the person of

ordinary skill in the relevant art would find obvious, the

Federal Circuit’s test denies a patent only if there is evidence

of a specific “suggestion, teaching, or motivation to combine

the relevant prior art teachings in the manner claimed.” App.

at 6a (citing prior Federal Circuit authorities). This “sugges-

tion test” is found neither in the Patent Act nor in this Court’s

relevant precedent.

To obtain protection under federal patent law, technologi-

cal developments must meet three substantive requirements,

which .can be summarized as utility, novelty, and non-

obviousness. See 35 U.S.C. $§101 (utility), 102 (novelty),

and 103 (non-obviousness). As this Court has recognized,

“(bjoth the novelty and the nonobviousness requirements of

federal patent law are grounded in the notion that concepts

within the public grasp, or those so obvious that they readily

could be, are the tools of creation available to all. They

provide the baseline of free competition upon which the

patent system's incentive to creative effort depends.” Bonito

Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 156

(1989). Because the novelty condition precludes patenting

only if a claimed invention is completely anticipated by a

single piece of prior art, the requirement of non-obviousness

is the sole provision that fully implements the core notion of

patent law that patents should be granted only for significant

advances over previously known technology. Patents are

awarded as “an inducement, to bring forth new knowledge.”

Graham v. John Deere Co., 383 U.S. 1, 9 (1966). Thus, as

articulated by one of the principal drafters of the 1952 Patent

Act, only “the unobvious developments which would not

occur spontaneously from the application of . . . ordinary

skill” are patentable. Giles S. Rich, The Principles of Pat-

entability, 42 J. Pat. Off. Soc’y 75, 81-82 (1960). Obvious

developments “will be made anyway, without the ‘fuel of

interest’ which the patent system supplies.” /d. If patents are

granted on obvious variations or combinations of what is

already known, they needlessly impose the costs of exclusiv-

ity on the public.

The standard that Congress chose te implement the policy

of requiring a significant advance over existing knowledge is

embodied in Section 103 of the Patent Act. That section

prohibits the issuance of patents on technological develop-

ments for which “the differences between the subject matter

sought to be patented and the prior art are such that the

subject matter as a whole would have been obvious at the

time the invention was made to a person having ordinary

skill in the art to which said subject matter pertains.” 35

U.S.C. §103. As explained in the Congressional reports that

accompanied its passage, Section 103 was intended to codify

“a condition which exists in the law and has existed for more

than 100 years .... An invention which has been made, and

which is new in the sense that the same thing has not been

made before, may still not be patentable if the difference

between the new thing and what was known before is not

considered sufficiently great to warrant a patent.” Graham,

383 U.S. at 14-15, quoting S. Rep. No. 82-1979 (1952) and

H. R. Rep. No. 82-1923 (1952). Thus, Section 103 codified

previous precedent adopting the practical requirement that

the judgment of whether an advance is significant enough to

warrant a patent must be made from the perspective of the

person of ordinary skill in the art.

Over te past two decades, the Federal Circuit has gradu-

ally developed an obviousness test that departs from the

statutory mandate to examine obviousness from the perspec-

tive of the “person having ordinary skill in the art.” The

Federal Circuit began to invalidate patents for obviousness

only when challengers could present prior art of record that

provided a “suggestion or incentive,” ACS Hospital Systems,

Inc. v. Montefiore Hospital, 732 F.2d 1572, 1577 (Fed. Cir.

1984), “teaching, suggestion or incentive,” Jn re Geiger, 815

F.2d 686, 688 (Fed. Cir. 1987), “reason, suggestion, or

motivation,” Jn re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir.

1992), or “teaching, suggestion or motivation,” /n re Raynes,

7 F.3d 1037, 1039 (Fed. Cir. 1993), to combine previously

existing technologies. This case involves the application of a

now-mature “suggestion test” that cannot be found anywhere

in Section 103 or in any other part of the Patent Act.

This Court has directly addressed the issue of non-

obviousness on several occasions, but none of its discussions

give any basis for grafting a “suggestion test” onto the

statutory language. See Graham, 383 U.S. at 17-18 (laying

out the factors underlying the non-obviousness determina-

tion); United States v. Adams, 383 U.S. 39, 51-52 (1965)

(upholding non-obviousness determination based in part on

expert skepticism about the invention); Anderson's-Black

Rock, Inc. v. Pavement Co., 396 U.S. 57, 62-63 (1969)

(finding obviousness because “to those skilled in the art the

use of the old elements in combination was not an invention

by the obvious-nonobvious standard”); Dann v. Commis-

sioner, 425 U.S. 219, 229-30 (1976) (noting that “{iJn

making the determination of ‘obviousness,’ it is important to

remember that the criterion is measured not in terms of what

would be obvious to a layman, but rather what would be

obvious to one ‘reasonably skilled in [the applicable] art’”

and holding that “the gap between the prior art and respon-

dent’s system is simply not so great as to render the system

nonobvious to one reasonably skilled in the art’) Sakraida v.

Ag Pro, Inc., 425 U.S. 273, 282 (1976) (finding claimed

invention obvious where the “particular use of the assembly

of old elements would be obvious to any person skilled in the

art of mechanical application”). Since the Federal Circuit’s

adoption of its “suggestion test,” this Court has not addressed

the issue of non-obviousness.

As the Petitioner notes, numerous commentators have

observed the inconsistency between the Federal Circuit’s test

and Supreme Court precedent. See Pet. for Cert. at 18-20

(citing authorities). Indeed, in its seminal interpretation of

Section 103 of the Patent Act in Graham, this Court not only

discussed the factors relevant to the determination of obvi-

ousness without once mentioning a ‘suggestion test,” it also

reversed an appellate court’s finding of non-obviousness,

despite the appellate court’s com iusion that there was

“nothing in the prior art suggestiag [the] unique combination

of these old features” in the claimed invention. Graham, 383

U.S. at 30. Thus, it would appear that that the Federal

Circuit’s “suggestion test” would have led to the opposite

result in Graham itself.

Because the Federal Circuit’s test relegates the “person

having ordinary skill in the art” to the sidelines and looks

almost entirely to the contents of the pnor art references to

demonstrate obviousness, it strays far from the underlying

statutory non-obviousness standard. The statutory require-

ment of non-obviousness is supposed to be separate from and

additional to the statutory requirement of novelty. See, e.g.,

Graham, 383 U.S. at 14-15. Rather than focusing on what is

already present in the prior art, the non-obviousness provi-

sion asks whether “the subject matter as a whole would have

been obvious at the time the invention was made to a person

having ordinary skill in the art,” 35 U.S.C. §103, in light of

all of the prior art. The Federal Circuit’s requirement that the

prior art contain a “suggestion to combine” blurs the distinc-

tion between novelty and non-obviousness and fails to follow

the statutory mandate that obviousness be judged from the

perspective which the “person having ordinary skill in the

art” would bring to the prior art as a whole. As Professor

Rebecca Eisenberg has noted:

[The Federal Circuit] has all but ignored the statutory di-

rective that judgments of nonobviousness be made from the

perspective of the PHOSITA [person having ordinary skill

in the art]. Today, PHOSITA sits on the sidelines of obvi-

ousness analysis. Courts consult PHOSITA on the scope,

content, and meaning of prior art references but not on the

ultimate question of whether the invention would have

been obvious at the time it was made in light of the prior

art.

Rebecca Eisenberg, Obvious to Whom? Evaluating Inven-

tions from the Perspective of PHOSITA, 19 Berkeley Tech.

L.J. 885, 888 (2004).

Although the Federal Circuit purports to recognize that

suggestions to combine existing elements may be implicit,”

see, e.g., In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000),

its application of the standard for “implicit” suggestions

continues to read the person having ordinary skill in the art or

“PHOSITA” out of the obviousness inquiry. Explicit or

implicit suggestions to combine may be found, according to

the Federal Circuit: ‘“1) in the prior art references them-

selves; 2) in the knowledge of those of ordinary skill in the

art that certain references . . . are of special interest or

importance in the field; or 3) from the nature of the problem

to be solved, leading inventors to look to references relating

to possible solutions to that problem.” App. at 6a (citations

omitted). The first option focuses entirely on what is in the

prior art references. The second limits the PHOSITA to the

role of a sort of reference librarian, assisting in locating

appropriate prior art references but apparently incapable of

applying them in light of his or her knowledge and skill.

At first glance, the third option — the “nature of the prob-

lem to be solved”’ — might appear to invoke the judgment of

the PHOSITA as to obviousness. Again, however, the focus

is on the prior art references; the nature of the problem serves

only to motivate a search for references relating to the

problem at hand. Indeed, the Federal Circuit’s analysis in this

case exemplifies the short shrift given to the person of

ordinary skill in the art by this approach. Here, the District

Court based its finding of a sufficient suggestion or motiva-

tion to combine references in part on the “nature of the

problem to be solved.” App. at 42a-43a. Nonetheless, the

Federal Circuit rejected the District Court’s findings because,

as applied by the Federal Circuit, the “nature of the problem

to be solved” provides # sognizable motivation to combine

references only when “two prior art references address the

precise problem that the patentee was trying to solve.” App.

at 12a. In this instance, the problems addressed by the

references did not track the specifics of the patent at issue

quite precisely enough. App. at 12a-13a. Despite lip service

to the question whether the nature of the problem would have

“led a person of ordinary skill in the art to combine the prior

art teachings in the particular manner claimed,” App. at 12a,

the court’s analysis in fact paid no attention to how such a

person would have viewed the prior art references in light of

the problem the patentee was trying to solve. Instead, the

Federal Circuit focused entirely on whether the problem

addressed in the references was precisely the same as the

problem addressed by the patent in suit. App. at 12a-13a.

There is apparently no room for the possibility that a person

of ordinary skill in the art might find it obvious to apply prior

art technology to a problem slightly different from the

problem articulated in the prior art reference.

While the “suggestion test” thus marginalizes the

PHOSITA in obviousness determinations in litigation, it

ensures that the PHOSITA has even less impact at the Patent

and Trademark Office. Federal Circuit precedent makes

clear that patent examiners cannot rely on common knowl-

edge in the art or on their own technical knowledge in the art

as a basis for rejecting patent applications. See, e.g., In re

Lee, 277 F.3d 1338, 1345 (Fed. Cir. 2002) (“*‘Common

knowledge and common sense,’ even if assumed to derive

from the agency's expertise, do not substitute for authority

when the law requires authority.”) (citation omitted). As a

result, the Federal Circuit has forbidden the Patent and

Trademark Office to deny a patent based on common knowl-

edge in the art without pointing to specific evidence of a

teaching, suggestion or motivation to combine the particular

existing references.

Because the Patent and Trademark Office has limited abil-

ity in the context of an ex parte examination proceeding to

collect evidence beyond what it can find in the written prior

art, the Federal Circuit’s approach severely limits the Patent

and Trademark Office’s ability to take into account the

common knowledge of those in the art. See Arti K. Rai,

Allocating Power over Fact-Finding in the Patent System, 19

Berkeley Tech. L. J. 907, 912-17 (2004) (making this point

and arguing that the Federal Circuit’s approach to examiner

technical knowledge may be inconsistent with this Court’s

mandate of deference to agency factfinding as articulated in

Dickinson v. Zurko, 527 U.S. 150 (1999)). By hobbling the

Patent and Trademark Office in this way, the Federal Circuit

has subverted this Court’s command “that the pmmary

responsibility for sifting out unpatentable material lies in the

Patent Office.” Graham, 383 U.S. at 18. The inability of the

Patent and Trademark Office to weed out obvious patents

under the Federal Circuit’s suggestion test is extremely

serious for the health of the patent system, since, as this

Court has recognized, “[t]o await litigation is — for all

practical purposes — to debilitate the patent system.” /d.

The Federal Trade Commission has also recognized the

difficulties for a competitive economy that are posed by an

inadequate standard of obviousness:

Inventive processes typically involve judgment, exper-

ence, and common sense capable of connecting some dots.

The suggestion test, rigidly applied, assumes away a

PHOSITA’s typical levels of creativity and insight and

supports findings of nonobviousness even when only a

modicum of additional insight is needed. . . . The presence

of ‘specific and definitive art references with clear motiva-

tion of how to combine those references’ may confirm the

obviousness of an invention. In contrast, the absence of

such prior art references does not provide any evidence

about whether a PHOSITA could have combined prior art

references to achieve the invention, given the typical level

of insight in that field.

Federal Trade Commission, Jo Promote Innovation: The

Proper Balance of Competition and Patent Law and Policy

(Oct. 2003), Chap. 4, at 14. (Emphasis added.)

In sum, the Federal Circuit’s obviousness test all but re-

quires both the Patent and Trademark Office and the courts to

base their analyses on documentary evidence of obviousness

which will often be unavailable both to the Patent and

Trademark Office and to the courts. The test will thus allow

patents to issue in many cases where combining pre-existing

technologies would have been an obvious step for a person

having ordinary skill in the art.

Il. The Federal Circuit’s “Suggestion Test” Sets Bad

Patent Policy

The low standard for patentability that results from applica-

tion of the “suggestion test” leads inevitably to the grant of

patent rights to combinations of existing technological

knowledge for which no patent incentive was needed. Such

patents not only do not “promote the Progress of . . . useful

Arts,” see U.S. Const., art. I, §8, cl. 8, they have pernicious

social effects. Amici are convinced that the “suggestion test”

results in the issuance and enforcement of many such patents

that should be declared invalid as obvious. See, e.g., Glynn

S. Lunney, Jr., E-Obviousness, 7 Mich. Telecomm. Tech. L.

Rev. 363, 370-379 (2000) (presenting a statistical study

showing a drop in Federal Circuit patent invalidations for

obviousness, and identifying the Circuit’s “suggestion” test

as one of the causes).

The unnecessary patents resulting from the Federal Cir-

cuit’s test lead to higher direct costs to consumers and higher

transaction costs associated with the need to negotiate

permission from additional patent owners in order to bring

obvious combination technologies to market. The issuance

of suspect patents also increases the litigation burden on the

federal courts.

In addition, the availability of patents on obvious combina-

tions overwhelms the Patent and Trademark Office with

applications for patents on obvious combinations of previ-

ously existing technologies; promotes socially wasteful races

to patent these obvious advances; and raises patent search

costs for those seeking to combine existing technologies.

Moreover, in attempting to find documentation of what is

commonly known in the art, patent examiners and later

litigants must waste time and resources searching for specific

articulations of common, but largely tacit, knowledge.

Patent examiners and after-grant challengers will often be

unable to find a specific “suggestion, teaching, or motiva-

tion” for a particular combination of existing elements, even

if that combination is not innovative. In many cases, it

would be so natural for a person of ordinary skill in the art to

use two existing elements together in appropriate circum-

stances that no one would think of articulating explicitly the

kind of “suggestion, teaching, or motivation” that the Federal

Circuit requires. “Trained scientists, engineers and other

practitioners are seldom so dull-witted as to unvaryingly

require the specific, step-by-step combination of elements

from the prior art.” John R. Thomas, Formalism at the

Federal Circuit, 52 Am. L. Rev. 771, 802 (2003).

Moreover, many aspects of ordinary skill in a technological

art are not likely to find their way into a written record, either

because such tacit knowledge is not amenable to verbal

description or because practitioners are motivated to publish

novel applications of their arts, not routine applications. See

National Research Council, A Patent System for the 21°"

Century 90 (2004) (“{S)cientists, artisans, and creative

people generally speaking strive to publish non-obvious

information. So if it is obvious to those of skill in the art to

combine references, it is unlikely that they will publish such

information.”) As Professor Eisenberg has noted, “[a]ctive

practitioners of a technology bring more to a problem than

may be found in wmitten pnor art, including training, judg-

ment, intuition, and tacit knowledge acquired through field

experience. Scientific and technological work involve the

application of craft skills that are familiar to practitioners but

defy explicit articulation.” Eisenberg, supra, at 897-98,

citing Jerome R. Ravetz, Scientific Knowledge and its Social

Problems 75-76 (1971).

Obvious combination patents are particularly likely to issue

in fast-moving technological areas in which the written prior

art is unlikely to contain up-to-date expositions of obvious

applications of new technologies. For example, every new

recording format — from cassette tapes to Compact Discs,

Digital Versatile Discs, Mini Discs, and solid state storage —

might present an opportunity for someone to claim “the

combination” of a microphone with this new technology to

enable the recording of sound waves in the air. When a new

recording technology is first announced, no one will have yet

articulated a specific “suggestion, teaching, or motivation” to

combine it with a microphone, precisely because that particu-

lar technology is new. Yet that should not mean that the first

person to articulate that combination in a patent application

should get exclusive rights to the combination for 20 years.

Similarly, technological advances have given rise to nv-

merous opportunities to computerize existing processes,

many of which would likely have been obvious to those

skilled in the art once the computer technology became

available. A related problem of obvious applications of new

technologies has also been noted in the biotechnology arena,

where many have argued that methodological advances

provided an obvious path to new results that should not

themselves have been patentable. As Professors Dan L. Burk

and Mark Lemley remark, “the Federal Circuit has bent over

backwards to find biotechnological inventions nonobvious,

even if the prior art demonstrates a clear plan for producing

the invention.” Js Patent Law Technology-Specific?, 17

Berkeley Tech. L.J. 1155, 1156 (2002).

Technological advances and expansive interpretations of

the scope of patentable subject matter have also resulted in

patents being issued in areas, such as software and business

method patents, in which the common knowledge of the art

has not traditionally been documented in easily accessible

forms such as patents and academic publications. The

Federal Circuit’s emphasis on documentation of what is

widely known in the art is particularly problematic for

patenting in these areas. See, e.g., Margo A. Bagley, E-

Commerce and Equivalence: Defining the Proper Scope of

Internet Patents, 7 Mich. Telecomm. & Tech. L. Rev. 253,

279-80 (2000-2001) (discussing the limited availability of

documentary prior art in the areas of business methods and

software).

The overpatenting that results from the Federal Circuit’s

“suggestion test” creates an unnecessary drag on innovation

through higher prices to consumers and transaction costs

associated with licensing and enforcing these unnecessary

patents. Anyone who wants to use the combination of

technologies will have to negotiate permission from and pay

royalties not only to the owners of any patents on the indi-

vidual elements, but also to the owner of the patent in the

combination. The costs of patents that are unnecessary to

promote innovation also include “the benefits lost when a

course of research is foregone out of fear that a product

cannot be produced without obtaining a license that may be

unavailable. Even when a product is produced, there may be

costs in restructuring a research program to design around

existing patents.” John H. Barton, Non-Obviousness, 43

IDEA 475, 494 (2003). When two or more parties can block

the practical application of technology, the difficulty and

social cost of developing that practical application increases

significantly, raising the likelihood of “patent thickets.” See,

e.g., Carl Shapiro, Navigating the Patent Thicket: Cross

Licensing, Patent Pools, and Standard Setting, in Innovation

Policy and the Economy (Adam Jaffe et al., eds., 2001); see

also Michael A. Heller & Rebecca S. Eisenberg, Can Patents

Deter Innovation? The Anticommons in Biomedical Re-

search, Science, May 1, 1998, at 698-99.

In addition, anyone interested in combining any existing

technologies must expend resources searching for possible

patents on such combinations, whether or not such patents

have issued. The low threshold of non-obviousness for

combination patents also provides incentives to invest in

socially wasteful efforts to patent run-of-the-mill combina-

tions of previously known technologies. See, e.g., Bronwyn

‘H. Hall and Dietmar Harhoff, Post-Grant Reviews in the U.S.

Patent System — Design Choices and Expected Impact, 19

Berkeley Tech. LJ. 989, 992-1000 (2004) (discussing

potential problems caused by low quality patents, presenting

evidence of issuance of lower quality patents by U.S. Patent

and Trademark Office, and relating the issuance of lower

quality patents to the “suggestion” test for obviousness);

Robert P. Merges, Uncertainty and the Standard of Pat-

entability, 7 High Tech. L. J. 1, 19 (1993) (arguing that the

non-obviousness standard should be high enough to motivate

research in areas in which results are uncertain). In addition,

it motivates true innovators to divert some of their resources

towards identifying and claiming all possible combinations

of their new technologies with existing technologies, to

prevent others from getting patents that would block impor-

tant and obvious applications of their technologies.

The Federal Circuit has explained its requirement of a

specific “teaching, suggestion, or motivation” to combine by

noting in a number of cases that a “rigorous application” of

such a requirement is the best way to avoid the potential

distortions of hindsight. App. at 6a-7a; Ruiz v. A.B. Chance

Co., 234 F.3d 654, 665 (Fed. Cir. 2000); Jn re Dembiczak,

175 F.3d. 994, 999 (Fed. Cir. 1999). Although amici do not

deny the potential for hindsight bias, amici believe that the

Federal Circuit’s suggestion test simply does not solve the

hindsight bias. Rather than capture the actual knowledge of

those of skill in the art at the time a claimed combination of

existing technology was made, it introduces its own hindsight

bias, suggesting that skilled artisans should somehow have

thought to articulate each obvious possibility in prior art

references. This assumption simply does not reflect reality.

In sum, the predictable result of the availability of patents

on obvious combinations of existing elements is that it

becomes more difficult to bring the benefits of technology to

society, thus undermining the ultimate goal of patent law.

I1I.This Case is an Excellent Vehicle for Addressing the

Conflict Between this Court’s Precedent and the Fed-

eral Circuit’s “Suggestion Test.”

The Federal Circuit has fully developed its rule that combi-

nations of existing elements are nonobvious, and therefore

patentable, unless some specific “teaching, suggestion, or

motivation” to combine those elements is found in the prior

art. Every active Federal Circuit judge has been a member of

a panel that applied that rule in a decided case.’ The Federal

Circuit’s decision not to publish the opinion in the instant

case, resolving an appeal from a fully-reasoned, published

District Court decision, is also a signal that the judges in that

Circuit believe that the “teaching, suggestion, or motivation” —

requirement is settled law, and that its application should

proceed as a matter of course. There is thus little possibility

that the Federal Circuit will correct its position without this

Court’s intervention.

This case is an excellent vehicle for deciding whether the

Federal Circuit’s obviousness test is in accord with the Patent

Act and with the Constitutional basis for the patent system.

The case involves simple technologies; it is procedurally

clean and npe; and counsel on both sides are experienced and

knowledgeable.

2 See, e.g., App. la (Judges Mayer, Schall, and Prost); Vulcan Engi-

neering Co., Inc. v. Fata Aluminium, Inc., 278 F.3d 1366 (Fed. Cir.

2002) (Judges Newman, Michel, and Lourie); Jn re Sang Su Lee, 277

F.3d 1338, 1343 (Fed. Cir. 2002) (Judges Newman, Clevenger, and Dyk);

Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1385 (Fed.

Cir. 2001) (Judges Newman, Michel, and Plager); Brown & Williamson

Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1124-25 (Fed. Cir.

2000) (Judges Clevenger, Bryson, and Linn); Winner International

Royalty Corp. v. Wang, 202 F.3d 1340, 1348 (Fed. Cir. 2000) (Judges

Michel, Rader, and Gajarsa); Jn re Dembiczak, 175 F.3d 994, 999 (Fed.

Cir. 1999) (Judges Mayer, Michel, and Clevenger); C.R. Bard, Inc. v. M3

Systems, 157 F.3d 1340, 1352 (Fed. Cir. 1998) (Judges Mayer, Newman,

and Bryson); Pro-Mold and Tool Co., Inc. v. Great Lakes Plastics, Inc.,

75 F.3d 1568, 1573 (Fed. Cir. 1996) (Judges Plager, Lourie and Rader).

There are two simple technologies at issue in this case.

Both relate to an automobile driver’s control of engine speed.

Or.e is an adjustable gas pedal. Such a pedal can be posi-

tioned so that it is closer or farther away from the driver’s

seat, accommodating shorter or taller drivers. The other is an

electronic gas pedal position sensor. It senses the position of

the gas pedal and reports that position by means of an

electronic signal to a computer in the car, which then adjusts

fuel and air flow to the car’s engine. This electronic throttle

control system replaces the older technique of mechanically

——tinking the gas pedal directly to the carburetor.

Respondents do not claim to have invented either the ad-

justable gas pedal or the electronic gas pedal position sensor.

Rather, they claim — in claim 4 of U.S. Patent No 6,237,565,

the claim at issue in this litigation — to have invented, and to

be entitled to exclusive patent rights to, the use of the combi-

nation of a particular prior art adjustable gas pedal together

with an (also prior art) electronic gas pedal position sensor.

___ Thus, this case presents a clear and simple example of a

patent combining prior art elements, which this Court can use

to consider the proper nonobviousness standards to apply to

such patents without being distracted by arguments about

complicated technologies.

The procedural stance in which this case reaches this Court

fully supports an examination of the question presented in the

petition for writ of certiorari. There can be no doubt that the

issue was preserved. Petitioner urged both the District Court

and the Federal Circuit to apply the nonobviousness stan-

dards articulated in this Court’s relevant precedents. Both

courts declined to do so. Although neither court’s opinion

contains a discussion of this rejection of Supreme Court

precedent, the lack of discussion is simply an acknowledge-

ment that the Federal Circuit has irrevocably committed itself

to that rejection, and has fully developed an alternative test.

The facts in this case that are relevant to the question pre-

sented have also been sufficiently developed. The patent

claim at issue in this case, and the relevant prior art patents,

have been thoroughly explored by both the District Court and

the Federal Circuit. There are no ambiguities that would be

cleared up by further factual development. The legal issue

here is ready to be decided by this Court.

Finally, counsel for both parties in this case are knowl-

edgeable and experienced. Jarmes W. Dabney of Fried Frank

Harris Shriver & Jacobson LLP, counsel of record for

petitioner, is a seasoned patent litigator whose previous

experience includes serving as the successful counsel of

record for petitioner in Holmes Group, Inc. v. Vornado Air

Circulations Sys., Inc., 535 U.S. 826 (2002). John F. Duffy,

of counsel for petitioner, is a law professor and former

Supreme Court clerk who has co-authored a leading case-

book on patent law, see Robert Patrick Merges & John

Fitzgerald Duffy, Patent Law and Policy: Cases and Materi-

als (3d ed. 2002), and who has written broadly on patent law

issues, see, e.g, John F. Duffy, Rethinking the Prospect

Theory of Patents, 71 U. Chi. L. Rev. 439 (2004); John F.

Duffy, Harmony and Diversity in Global Patent Law, 17

Berkeley Tech. L. J. 685 (2002); John F. Duffy, The Festo

Decision and the Return of the Supreme Court to the Bar of

Patents, 2002 Sup. Ct. Rev. 273; John F. Duffy, On Improv-

ing the Legal Process of Claim Construction: Administrative

Alternatives, 2 Wash U. J. L. & Pol’y 109 (2000).

Counsel for respondents, successful appellants below, are

also experienced litigators who have previous experience in

appellate patent litigation in cases such as Teleflex, Inc. v.

Ficosa North America Corp., 299 F.3d 1313 (Fed. Cir.

2002), and additional appellate litigation experience in cases

such as Miltimore Sales, Inc. v. International Rectifier, Inc.,

119 Fed. Appx. 697 (6" Cir. 2004). Both parties would be

well represented in this Court.

In sum, the question presented in this case raises an impor-

tant and timely issue of federal patent law. This case is the

perfect vehicle for considering it.

CONCLUSION

For the foregoing reasons, the petition for writ of certiorari

should be granted.

Respectfully submitted,

KATHERINE J. STRANDBURG ROBERT BRAUNEIS*

Assistant Professor of Law Associate Professor of Law

DEPAUL UNIVERSITY THE GEORGE WASHINGTON

COLLEGE OF LAW UNIVERSITY LAW SCHOOL

25 East Jackson Boulevard 2000 H Street, NW

Chicago, IL 60604

(312) 362-8536

MARGO BAGLEY

Associate Professor of Law

EMORY UNIVERSITY

SCHOOL OF LAW

1301 Clifton Road

Atlanta, GA 30322

JAMES BESSEN

Lecturer in Law

BOSTON UNIVERSITY

SCHOOL OF LAW

765 Commonwealth Avenue

Boston, MA 02215

MICHAEL A. CARRIER

Associate Professor of Law

RUTGERS UNIVERSITY

SCHOOL OF LAW - CAMDEN

217 North Fifth Street

Camden, NJ 08102

Washington, DC 20052

(202) 994-6138

*Counsel of Record for

Amici Curiae

ROCHELLE COOPER DREYFUSS

Pauline Newman Professor of

Law

NEW YORK UNIVERSITY

SCHOOL OF LAW

40 Washington Square South

New York, NY 10012

CHRISTINE HAIGHT FARLEY

Associate Professor of Law

AMERICAN UNIVERSITY

WASHINGTON COLLEGE OF

LAW

4801 Massachusetts Avenue,

Washington, DC 20016

CYNTHIA M. Ho

Associate Professor of Law

and Vickrey Research

Professor

LOYOLA UNIVERSITY

CHICAGO SCHOOL OF LAW

One East Pearson Street

Chicago, IL 60611

TIMOTHY R. HOLBROOK

Assistant Professor of Law

CHICAGO-KENT

COLLEGE OF LAW

565 W. Adams St.

Chicago, IL 60661

PETER JASZI

Professor of Law

AMERICAN UNIVERSITY

WASHINGTON COLLEGE OF

LAW

4801 Massachusetts Avenue,

Washington, DC 20016

JAY P. KESAN

Professor of Law

UNIVERSITY OF ILLINOIS

COLLEGE OF LAW

504 East Pennsylvania

Avenue

Champaign, IL 61820

MARK A. LEMLEY

William H. Neukom

Professor of Law

STANFORD LAW SCHOOL

Crown Quadrangle

Stanford, CA 94305

GLYNN S. LUNNEY, JR.

Professor of Law

TULANE UNIVERSITY

SCHOOL OF LAW

Weinmann Hall

6329 Freret Street

New Orleans, LA 70118-6231

RONALD J. MANN

Ben H. & Kitty King Powell

Chair in Business &

Commercial Law

UNIVERSITY OF TEXAS

SCHOOL OF LAW

727 E. Dean Keeton Street

Austin, TX 78705

ROBERT P. MERGES

Wilson Sonsini Goodrich &

Rosati Professor of Law

and Technology

BOALT HALL SCHOOL OF LAW

UNIVERSITY OF CALIFORNIA,

BERKELEY

Berkeley, CA 94720

KIMBERLY A. MOORE

Professor of Law

GEORGE MASON UNIVERSITY

SCHOOL OF LAW

3301 Fairfax Drive

Arlington, VA 22201

JANICE M. MUELLER

Professor of Law

UNIVERSITY OF PITTSBURGH

SCHOOL OF LAW

3900 Forbes Avenue

Pittsburgh, PA 15260

JOSEPH SCOTT MILLER

Associate Professor of Law

Lewis & CLARK LAW SCHOOL

10015 S.W. Terwilliger Blvd.

Portland, Oregon 97219

CRAIG A. NARD

Professor of Law

CASE WESTERN RESERVE

UNIVERSITY SCHOOL OF LAW

11075 East Blvd.

Cleveland, OH 44106

MALLA POLLACK

Visiting Professor

UNIVERSITY OF IDAHO

COLLEGE OF LAW

6” & Rayburn

Moscow, ID 83843

ARTI K. RAI

Professor of Law

DUKE LAW SCHOOL

Science Drive and

Towerview Road

Durham, NC 27708

PAMELA SAMUELSON

Chancellor's Professor of Law

BOALT HALL SCHOOL OF LAW

UNIVERSITY OF CALIFORNIA,

BERKELEY

Berkeley, CA 94720

JOSHUA SARNOFF

Practitioner-in-Residence

AMERICAN UNIVERSITY

WASHINGTON COLLEGE OF

LAW

4801 Massachusetts Avenue,

Washington, DC 20016

JOHN R. THOMAS

Professor of Law

GEORGETOWN UNIVERSITY

LAW CENTER

600 New Jersey Avenue, NW

Washington, DC 20001

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.