Opposition Brief — Wyeth Holdings Corp. v. University of Colorado Foundation, Inc.

FILED

No. 08-1163 MAR 18 2004

i eT Th

In The

Supreme Court of the Anited States

¢

WYETH HOLDINGS CORPORATION,

Petitioner,

v.

THE UNIVERSITY OF COLORADO FOUNDATION,

INC., THE UNIVERSITY OF COLORADO, THE BOARD

OF REGENTS OF THE UNIVERSITY OF COLORADO,

ROBERT H. ALLEN AND PAULA. SELIGMAN,

Respondents.

4

Vv

On Petition For A Writ Of Certiorari

To The United States Court Of Appeals

For The Federal Circuit

a

Vv

BRIEF IN OPPOSITION TO PETITION

FOR A WRIT OF CERTIORARI

MARK A. LEMLEY ROBERT N. MILLER

Counsel of Record STEPHANIE E. DUNN

KEKER & VAN NEST, L.L.P. PERKINS COIE LLP

710 Sansome Street 1899 Wynkoop Street,

San Francisco, CA 94111-1704 Suite 700

(415) 391-5400 Denver, CO 80202

HAROLD A. HADDON (303) 291-2300

SASKIA A. JORDAN

Ty GEE

HADDON, MORGAN, MUELLER,

JORDAN, MACKEY &

{ ' FOREMAN, P.C.

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OR CALL COLLECT (402) 342-2831

TABLE OF CONTENTS

Page

Ee NT a kceieensscinssnctsarensrenetnandsounnnsaecsssenins 1

eS Re FEB eviisiedeverniininecesennisicsvnssnesescns 2

A. The University doctors’ invention.................. 2

B. Cyanamid’s plagiarism of the doctors’ confi-

dential manuscript, and Cyanamid’s fraudu-

lent patent APPLICATION ............c00sssscessrecesscoess 4

C. Cyanamid’s acquisition, enforcement, and

concealment of the patent .................csseeeeeeees 6

D. The award of equitable remedies for unjust

I oink cicdtecaiccii siseaenascvinwensinveniverans

REASONS FOR DENYING THE PETITION ...........

I. Cyanamid misapprehends this Court’s

approach to patent law preemption............... 9

A. As this Court has held for nearly half a

century, the Patent Act does not preempt

Cat TGR OE PAWN sic cicscrvccvnssenescisscesss 9

B. This case presents no conflict between -

state law and federal patent law............. 13

II. The existence of other patent remedies is

I piciicicnce sos tiviccdsorenaintandinitariiateenienias 19

III. The judgment is entirely fair, and is consis-

tent with the policies of unjust enrichment... 21

IV. This is not a proper case for certiorari review.. 23

A. The district court awarded unjust en-

richment alternatively under state and

federal law

ii

TABLE OF CONTENTS - Continued

Page

B. This case does not present an-inter- or

intra-circuit split, or even an issue of

CONTINUING IMPOTtANCe .............ceeeeeeeeeevees 27

C. The preemption issue is not squarely

SOCIO wucesicsssccrcsintanenmeniinns sicaanabacennuei 28

CONC AT III cv vnecicacssesssascninepeessensensnaqianenaneanaeesnents 30

iii

TABLE OF AUTHORITIES

Page

CASES

Agostini v. Felton, 521 U.S. 203 SET RA NOT AO Oe 28

Arachnid, Inc. v. Merit Indus., Inc., 939 F.2d 1574

I I a ae cass acsaalenaisdeneebnadnacexmebiens 24, 25, 26 |

Aro Mfg. Co. v. Convertible Top Replacement Co.,

I oi scien aa vndslscnnebuateniioidopenaneninn’ 25

Aronson v. Quick Point Pencil Co., 440 U.S. 257

Tica a uashseasinadenieinamnnanroniens 10, 11, 12, 13, 18, 19

Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489

cs ssa siisdnntiihalbbebannhiveianavernsinsuset> passim

Chauffeurs, Teamsters & Helpers, Local No. 391 v. -

BN, GP ae I CRO) ac sscccsetcrsccpcrnceesenecsenreeseoscsnsoess 25

Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S.

REISE BS ep ae Se en eee are il

Davis v. United Stutes, 495 U.S. 472 (1990)..................... 29

Dow Chem. Co. v. Exxon Corp., 139 F.3d 1470 (Fed.

iss dae cosets deddsanansauiibdapeedancaenderaeneaneneins 27

EarthInfo, Inc. v. Hydrosphere Resource Consult-

ants, Inc., 900 P.2d 113 (Colo. 1995).................0000008 22. 23

Goodman v. Lukens Steel Co., 482 U.S. 656 (1987)............ 2

Great-West Life Annuity Ins. Co. v. Knudson, 534

a sick ccaibiivdheubdaiiiersineuncdasadinavravabieers 24

Hunter Douglas, Inc. v. Harmonic Design, Inc., 153

Se EE: CRE IED vicnnesnsnnsnntbssnenennesiesenssoonsvscuanses 27

Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470

SN Ai aet d ach rsadbisleanitphitisdvennataesdsubacnuuakinunbibnlevwicsss passim

McCray v. New York, 461 U.S. 961 (1983) .......... cee eeeees 25

‘sun eme ee

iv

TABLE OF AUTHORITIES — Continued

Page

Papazian v. American Steel & Wire Co., 155

F. Supp. 111 (N.D. Olio 1957)...............cccccerrereeesess 25, 26

Pfaff v. Wells Elecs., Inc., 525 U.S. 55 (1998)........ 15, 18, 22

Randall v. Loftsgaarden, 478 U.S. 647 (1986)..........:::006 23

Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225

CIID scscctiniusesclsannicescesnhtirdesuicnaaiedincatuecnatebnamtnniiaebten 11, 12 |

University of Colo. Found., Ine. v. American Cy- :

anamid Co., 529 U.S. 1130 (2000)................ccccccceeseeeees 20

Wisconsin Dep't of Indus., Labor & Human Rela-

tions v. Gould, Inc., 475 U.S. 282 (1986).................sceee 17

|

STATUTES

LL oS ONN <SMARET), Mane e nn 12

0 es 0 EE tiie neemeaennen 2, 20, 24, 26

RU 5 icici scuioenenes ieee 12

Ee ee aesvicnsctesternsicratetirsnsacneceanetaaabetans 12

BE Fe ee ie iedistcciccenmienccnteiastinanmeenaeseanaliation 12

OTHER AUTHORITIES

1 Dan B. Dobbs, Law of Remedies § 4.1(1) (2d ed.

BIE ii. ccs csascass.ta dl caicsidninedinaanccapesasns eeleaebaaa nee: 22

INTRODUCTION

Wyeth Holding Corporation f/k/a American Cyanamid

Company [“Cyanamid”] stole the invention of two re-

spected doctors, plagiarized, cut and pasted portions of a

confidential manuscript drafted by the doctors into a

patent application to obtain a patent on the invention it

stole, committed perjury in a sworn statement to the

Patent and Trademark Office, fraudulently concealed its

theft from the true inventors for years, enforced the

plagiarized patent against generic competitors and pre-

sented a key witness at trial whom the district court found

“utterly lacking in credibility.” Yet, after nearly eleven

years of litigation, Cyanamid now requests this Court to

relieve it from any consequences for its conduct under the

guise that the equitable remedy awarded by the district

court and affirmed by the Federal Circuit is preempted.

Such is not the case.

Cyanamid’s sanitized petition warns that a constitu-

tional crisis looms in the patent system. Cyanamid can

create this illusion only by completely disregarding the

extraordinary facts of this case — facts found by the district

court and affirmed by the Federal Circuit. Once Cyana-

mid’s egregious misbehavior is reviewed, it becomes clear

that the district court’s unjust enrichment remedy is

nothing more than the straightforward application of

traditional principles of equity and is entirely consistent

with both this Court’s and the Federal Circuit’s patent

jurisprudence.

This is not a case in which this Court is being asked to

resolve a conflict between circuits, or even tension between

different opinions in the same circuit. Under the clear

direction of this Court’s precedents, the Federal Circuit

has created a consistent set of patent preemption rules.

This Court should be loath to disturb such rules without

good reason to do so. No such reason appears here, where

the application of existing law to the unique facts of this

case compels the result reached by the district court and

the Federal Circuit. Indeed, if anything, it is Cyanamid’s

novel proposed blanket preemption rule that would pre-

cipitate a crisis in the patent system by allowing inven-

tions to be stolen with impunity.

Further, even were this Court to conclude that the

Federal Circuit’s consistent application of preemption

principles in patent cases required the attention of this

Court, this is not the case to review those principles. The

district court rested its judgment on two alternative

grounds in addition to unjust enrichment — § 256 of the

Patent Act (35 U.S.C. § 256 (2000)) and Colorado common

law fraud. Moreover, Cyanamid failed to properly raise

these issues at trial and on appeal. Thus, this Court

should be especially reluctant to intervene in this case.

STATEMENT OF FACTS

Absent unique circumstances, facts found by the

district court and affirmed on appeal are accepted as true

before this Court. E.g., Goodman v. Lukens Steel Co., 482

U.S. 656, 665 (1987). Cyanamid improperly ignores the

extraordinary facts of this case, which include brazen

plagiarism, fraud, concealment and perjury.

A. The University doctors’ invention.

In the late 1970s, Stuart Pharmaceutical’s Stuartna-

tal 1+1 and Cyanamid’s Materna were the two leading

prescription prenatal supplements on the market, with

each product commanding 40% to 45% of the market. Pet.

App. 3a.

3

In 1979, Stuart representatives began telling physi-

cians and pharmacists that, due to its:chemical composi-

tion, Stuartnatal provided superior iron absorption to that

of Materna. To refute these claims and to protect Cyana-

mid’s lucrative share of the prenatal supplement market,

Leon Ellenbogen, a Cyanamid employee, asked Dr. Robert

H. Allen, his long-time friend and professional colleague to

perform a study comparing the iron absorption of Materna

to that of Stuartnatal. Pet. App. 3a.

In summer 1979, Drs. Allen and Seligman [collectively

“University doctors”], conducted the first study. The

results showed poor iron absorption for both Materna and

Stuartnatal. That is, although iron is important for preg-

nant women, pregnant women using Materna or Stuartna-

tal would not absorb an adequate amount of iron from

either multivitamin. Nonetheless, Cyanamid was pleased

with the results, as they disproved Stuart’s sales pitch.

Pet. App. 85a. Cyanamid was uninterested either in

further studies to determine the cause of the poor iron

absorption or in reformulating its product to address the

iron absorption problem. See Pet. App. 161a.

Because of their concern about the iron absorption

problem of the leading prenatal multivitamin brands and

the consequences for the health of pregnant women, the

University doctors conducted additional studies, inde-

pendent of Cyanamid, to determine the cause and solution

of the problem. They discovered that the large amounts of

calcium carbonate and magnesium oxide contained in

Materna inhibited iron absorption, and that Materna

would provide pregnant women with adequate iron ab-

sorption if the amounts of calcium carbonate and magne-

sium oxide were reduced. Based on the doctors’ discovery,

Cyanamid reformulated Materna. Pet. App. 4a-6a, 89a.

Se ee eae

4

Applying the federal standard for inventorship, the

district court found that the University doctors “conceived

of, designed and conducted” the independent studies that

led to the discovery of the cause and solution of the iron

absorption problem. It found that “the idea for reformulat-

ing Materna, and the research concepts and ideas neces-

sary to its formation and testing, were entirely the

Doctors’.” Pet. App. 89a. In an oral ruling, the court found

that Ellenbogen had nothing to do with the University

doctors’ discovery, noting “I found then, and I continue to

believe Dr. Allen ... I did not believe and continue to

disbelieve . . . Ellenbogen.”

B. Cyanamid’s plagiarism of the doctors’ confi-

dential manuscript, and Cyanamid’s fraudu-

lent patent application.

Based on their discovery of the iron absorption prob-

lem, the cause of the problem and the solution to the

problem, the University doctors prepared a manuscript

summarizing the results of their studies and their discov-

ery. The manuscript was submitted to the NEw ENGLAND

JOURNAL OF MEDICINE in July 1981. Pet. App. 5a. Consis-

tent with their long-standing professional practice, Dr.

Allen sent Ellenbogen a copy of the manuscript with the

understanding it would be kept confidential. Pet. App. 5a

& n.3. In addition to the text, the manuscript contained a

detailed table and four figures describing the doctors’

studies. Ellenbogen knew the manuscript, including the

table, figures and text, was confidential and could not be

used or copied without Dr. Allen’s express prior approval.

At no time did the doctors authorize Ellenbogen or Cy-

anamid to copy or disclose the confidential manuscript or

the distinctive format in which the data from the critical

studies were depicted. See Pet. App. 164a.

a

5

The district court found that “within days” of receiving

the confidential manuscript, and without the knowledge or

consent of the University doctors, Ellenbogen filled out a

company “Record of Inventorship” form claiming he

invented the reformulated Materna. Cyanamid then filed

a patent application listing Ellenbogen as the “sole inven-

tor.” Pet. App. 6a, 90a. The patent application was plagia-

rized from the University doctors’ confidential manuscript,

without any attribution to either the University doctors or

the manuscript. Pet. App. 6a, 28a, 41a, 90a, 109a, 165a.

Cyanamid copied the text of the manuscript and literally

cut and pasted the table in its entirety into the patent

application. Pet. App. 124a-133a. Cyanamid also traced all

four figures contained in the manuscript into its patent

application, leading the district court to remark, “[t]he

completeness, and obviousness, of the wholesale lifting of

the Doctors’ work in Table I and figures 1-4 cannot be

overstated.” Pet. App. 19a, 109a. Cyanamid submitted the

plagiarized patent application to the PTO, and Ellenbogen

submitted a false affidavit of inventorship swearing he |

was the true and sole inventor. Pet. App. 90a.

Ellenbogen spun a “web of deceit,” Pet. App. 94a,

around the patent application from the beginning. He

committed perjury on the stand. In reviewing his testimony,

the district court stated: “I... repeat, in the strongest of

terms, that I did not believe Dr. Ellenbogen at trial and

continue to disbelieve him now. My review of the testi-

mony at trial and reconsideration of all the evidence in

light of the post-trial briefs and arguments serves to

intensify my finding that Ellenbogen is utterly lacking in

credibility.” Pet. App. 115a-116a. “I found Ellenbogen’s

testimony lacking in credibility based on my careful

- consideration of his demeanor. I found Ellenbogen misrep-

resented to Raymond, Cyanamid’s patent lawyer, and to

Cyanamid generally his role in the Studies and in their

i.

design, and in the design and conception of the invention

ultimately patented.” Pet. App. 16a (quoting Pet. App.

116a).

C. Cyanamid’s acquisition, enforcement, and

concealment of the patent.

In February 1984, Cyanamid obtained a patent on the

reformulated Materna [“the ‘634 Patent”]. Subsequently,

Cyanamid aggressively wielded the “634 Patent to exclude

generic competition with Materna, suing six generic

competitors and obtaining stipulated injunctions against

them. See Pet. App. 7a.

At the same time, Cyanamid concealed the existence

of the patent from the University doctors. The district

court found that Cyanamid and Ellenbogen were careful

not to communicate anything to the University doctors

about the patent or the award Ellenbogen received for it

from Cyanamid until Ellenbogen in 1993 inadvertently

mentioned the patent to Dr. Seligman. Pet. App. 91a. The

district court found that this concealment, which contin-

ued for nine years, was “[clontrary to the established

routines of their friendship.” Pet. App. 165a. Cyanamid’s

efforts to conceal the patent were so great that when it

sent samples of reformulated Materna to the University

doctors in 1985, it was careful to apply a sticker reading

“For Investigational Use Only” so that it covered the

patent notice. Pet. App. 167a.

Shortly after the doctors learned of the patent, they

commenced this action. After a six-week bench trial in

1996, the district court found by clear and convincing

evidence that the doctors were the true inventors of the

‘634 invention, and entered judgment for them on their

claims of common law fraud and unjust enrichment.

Believing that the district court had determined inventor-

ship using standards inconsistent with patent law, the

Federal Circuit in 1999 vacated all the awards and re-

manded with directions to apply the federal patent law

inventorship standard. Cyanamid’s petition for rehearing

on the preemption issue was denied, and Cyanamid chose

not to petition for certiorari.

On remand, Cyanamid stipulated that the district

court should determine inventorship based on the existing

record. See Pet. App. 20a. In July 2000, applying the

federal patent law standards of proof, the district court

again found by clear and convincing evidence that the

doctors were the true inventors of the ‘634 invention. It

found that Ellenbogen and Cyanamid- had tortiously

misappropriated the confidential manuscript to fraudu-

lently obtain the ‘634 Patent, and that Cyanamid had

reaped tens of millions of dollars by aggressively enforcing

the patent to prevent its competitors from using the

University doctors’ invention.

The patent expired during the protracted pendency of

this litigation. Pet. App. 189a.

D. The award of equitable remedies for unjust

enrichment.

As directed by the Federal Circuit in that court’s 1999

decision, the district court determined Cyanamid’s unjust

enrichment by calculating the incremental profit (less

costs) from the sale of Materna attributable to the right to

exclude generic competition that Cyanamid gained from

the ‘634 Patent. It expressly ruled that it was only award-

ing profits attributable to Cyanamid’s use of the ‘634

Patent to exclude competition, and that it was not award-

ing profits Cyanamid would have made from merely using

the ‘634 invention. In determining the unjust enrichment

8

remedy, the court relied upon the analysis and calculations

performed by Professor Daniel Rubinfeld, whose analysis

the court found to be credible, persuasive and conserva-

tive. Pet. App. 22a-23a.

The district court limited the unjust enrichment

remedy to patent-related incremental profits on domestic

sales of Materna during a ten-year period — from February

1984, when the ‘634 Patent issued, through 1994, when

Cyanamid stopped enforcing the patent after commence-

ment of this action. Pet. App. 22a. The court specifically

found that the unjust enrichment remedy of $23,243,228

conservatively and properly excluded amounts Cyanamid

expended for “production, marketing, distribution and

other variable costs associated with the manufacture and

sale of [Materna] under the ‘634 Patent.” Pet. App. 47a-

48a.

The court also awarded alternative equitable remedies

and damages, which the University doctors had requested

in their complaint. The court found that the University

doctors were equitable title holders of the ‘634 Patent

under § 256 and that this constituted a separate and

independent ground for requiring Cyanamid to disgorge

its patent-related incremental profits. These profits were

awarded in the alternative, the court stated, because the

amount of these profits was identical to, and therefore

duplicative of, the remedy it awarded under Colorado

unjust enrichment law. As an additional alternative

award, the court found that the University doctors had

suffered damages as a result of Cyanamid’s fraud. The

court ruled, however, that the damages were subsumed

within the unjust enrichment remedy and accordingly

declined to award fraud damages except as an alternative

remedy. See generally Pet. App. 73a-80a.

9

The Federal Circuit affirmed the district court’s

findings and the award under Colorado unjust enrichment

law. Accordingly, the Federal Circuit found it unnecessary

to consider the alternative awards. Pet. App. 23a.

REASONS FOR DENYING THE PETITION

I. Cyanamid misapprehends this Court’s ap-

proach to patent law preemption.

In arguing for a result — any result — that would

permit it to escape the facts of this case and avoid any

consequence for its misconduct, Cyanamid urges a re-

markable, schizéphrenic approach to patent preemption.

On one hand, Cyanamid suggests that Congress’ enact-

ment of the Patent Act preempted the field of invention,

displacing all state laws — or at least their remedies —

proscribing torts and other misconduct relating to inven-

tions. See Pet. 9, 18. On the other hand, Cyanamid ap-

pears to recognize that this Court has rejected the

argument that the Patent Act preempts the field of inven-

tion, and argues that fraud and unjust-enrichment reme-

dies “conflict” with the Patent Act. See Pet. 17. There is no

such confusion in this Court’s patent law preemption

jurisprudence.

A. As this Court has held for nearly half a

century, the Patent Act does not preempt

the field of invention.

Whether the states are forbidden to act at all in the

area of protection of intellectual property is not.an open

question. That question was answered decisively — and

adversely to Cyanamid — in the landmark patent preemp-

tion case, Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470,

479 (1974), which held that the Patent Act does not pre-

empt state trade secret laws:

a

10

Just as the States may exercise regulatory power

over writings so may the States regulate with re-

spect to discoveries. States may hold diverse

viewpoints in protecting intellectual property to

invention as they do in protecting the intellectual

property relating to the subject matter of copy-

right. The only limitation on the States is that in

regulating the area of patents and copyrights

they do not conflict with the operation of the laws

in this area passed by Congress....

If a state law is “not incompatible” with — if it “ad-

vance[s]” — the goals of federal patent law, the state law is

subject to “[nleither complete nor partial pre-emption,”

416 U.S. at 492, under the federal patent laws. The Kewa-

nee Oil Court observed that state law protecting trade

secrets and federal patent law “have co-existed in this

country for over one hundred years” and “Congress, by its

silence over these many years, has seen the wisdom of

allowing the States to enforce trade secret protection.” Jd.

at 493.

In Aronson v. Quick Point Pencil Co., 440 U.S. 257

(1979), the Court again underscored that Congress did not

intend the Patent Act to occupy the field of invention:

State law is not displaced merely because the

contract relates to intellectual property which

may or may not be patentable; the states are free

to regulate the use of such intellectual property

in any manner not inconsistent with federal law.

In this as in other fields, the question of whether

federal law pre-empts state law involves a con-

sideration of whether that law stands as an

* Id. at 484.

* Id. at 487.

11

obstacle to the accomplishment and execution of

the full purposes and objectives of Congress. If it

does not, state law governs.

440 U.S. at 262 (internal quotation marks and citations

omitted).

Cyanamid’s avoidance of any serious analysis of

patent law preemption cases is emblematic of the prob-

lems with its approach to patent law preemption. Since

1964, this Court has decided five patent preemption cases:

Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964);

Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234

(1964); Kewanee Oil; Aronson; and Bonito Boats, Inc. v.

Thunder Craft Boats, Inc., 489 U.S. 141 (1989). Cyanamid

ignores Sears and Compco. Devoting one sentence each to

Kewanee Oil and Aronson, Cyanamid dismisses both as

irrelevant. Pet. 17. It finds only Bonito Boats useful.

This approach to the Court’s preemption cases blinds

Cyanamid to the Court’s consistent, decades-long applica-

tion of the same patent law preemption principle: there is

no preemption unless there is conflict between state law

and federal patent law. See Sears, 376 U.S. at 232 (“Doubt-

less a State may, in appropriate circumstances, require

that goods, whether patented or unpatented, be labeled or

that other precautionary steps be taken to prevent cus-

tomers from being misled... .”); Compco, 376 U.S. at 238

(“A State of course has power to impose liability upon

those who ... deceive the public by palming off their

copies as the original.”); Kewanee Oil, 416 U.S. at 492

(“Neither complete nor partial pre-emption of state trade

secret law is justified.”); Aronson, 440 U.S. at 265 (“Our

holding in Kewanee Oil Co. puts to rest the contention that

federal law pre-empts and renders unenforceable the

contract made by these parties.”).

Even if it were appropriate for Cyanamid to quaran-

tine Bonito Boats from the Court’s other patent law

12

preemption cases, Cyanamid would gain no advantage: the

Court in Bonito Boats expressly “reaffirmed the pragmatic

approach which Kewanee takes to the pre-emption of state

laws dealing with the protection of intellectual property,”

and specifically embraced each of the cases Cyanamid

dismisses as irrelevant — Kewanee Oil, Aronson, Sears and

Compco. 489 U.S. at 156. The Bonito Boats Court specifi-

_ cally recognized that states have the authority to regulate

“tortious appropriation of private information.” 489 U.S. at

154.

An award of restitution for unjust enrichment is not

“patent-like” in any meaningful sense. The judgment in

this case does not create a transferable property right, as a

patent would. It gives the University doctors no rights

whatsoever against third parties, as a patent would. It

gives them no rights to injunctive relief, or treble dam-

ages, or attorneys fees, as a patent would. 35 U.S.C.

§§ 283, 284 & 285 (2000). It does not even give them the

right to stop Cyanamid, the fraudfeasor, from using the

invention.

Cyanamid suggests that the size of the judgment says

something about the need for patent field preemption

because, it argues, the University doctors received an

award greater than would have been available under the

Patent Act. Cyanamid is incorrect. Had the University

doctors obtained a patent, they would have been entitled

to a host of remedies that the award did not provide — in-

junctive relief, § 283; treble damages for willful infringe-

ment, § 284; attorney fees, § 285; and orders~ excluding

patented goods from the United States, 19 U.S.C. § 1337

(2000). Further, the University doctors would have been

entitled to relief not just against Cyanamid, who stole and

then patented the invention, but against anyone who used

the invention. By choosing not to file for patent protection,

the University doctors gave up these remedies.

13

B. This case presents no conflict between

state law and federal patent law.

In Cyanamid’s expedition to enlarge federal preemp-

tion so that it swallows venerable common law torts and

remedies available in all 50 states, Cyanamid seizes upon

the term “patent-like protection” from Bonito Boats and —

untethering the term from its context — argues that it

means no state law remedy may be applied in the presence

of an invention. This is an extraordinary reading of Bonito

Boats, one that finds no support in this Court’s preemption

cases, or in Bonito Boats itself.

The Court in Bonito Boats employed the term “patent-

like protection” in reiterating the central lesson of the very

patent preemption cases Cyanamid waves off: “‘[S]tates

are free to regulate the use of ... intellectual property in

any manner not inconsistent with federal law.’” 489 U.S.

at 156 (quoting Aronson, 440 U.S. at 262). The converse of

the lesson also is true, the Court said: states may not

“substantially interfere[] with the enjoyment of an unpat-

ented utilitarian or design conception which has been

freely disclosed by its author to the public at large,”

because such interference “contravenes the ultimate goal

of public disclosure and use which is the centerpiece of

federal patent policy.” Jd. at 156, 157. The Court in Bonito

Boats “reaffirmed” both parts of the preemption lesson. Id.

at 156, 157.

To recite the lesson is to refute Cyanamid’s preemp-

tion argument and, indeed, to demonstrate that this case

has little to do with preemption at all. In the first appeal,

the Federal Circuit, believing that the trial court had

determined inventorship of the ‘634 technology under a

standard less than that imposed by the Patent Act, va-

cated the judgment and remanded with express direction

that the trial court was to apply the federal patent law

14

standard of inventorship. On remand, the trial court

expressly applied the federal patent law standard of

inventorship, on which Cyanamid and the University

doctors agreed. Using that standard, the trial court again

found by clear and convincing evidence that the University

doctors were the sole and true inventors. Moreover, the

court found again that the University doctors had in-

tended to allow the invention to pass into the public

domain — available for use by anyone — and that Cyanamid

intercepted the invention on its way to the public domain,

claimed the invention as its own, fraudulently obtained

the ‘634 Patent, and wielded the patent monopoly to

exclude all others from using the invention. Only after the

trial court made these findings did it award remedies

permitted under Colorado law for fraud and unjust en-

richment.

In short, the trial court applied federal patent laws to

determine inventorship, found that the University doctors

— not Cyanamid — were the inventors, and then awarded

federal patent law and state-law remedies premised on

those patent law-based findings. None of these findings, or

the consequences flowing from them, disturbed any

principle of patent law.

The question presented to the trial court and the

Federal Circuit — and now to this Court — is whether the

award of stdate-law remedies on these unique facts “sub-

stantially interferes with the enjoyment of an unpatented

[invention] which has been freely disclosed by its author to

the public at large,” Bonito Boats, 489 U.S. at 157 -

whether, in short, awarding remedies under the Colorado

common law of fraud and unjust enrichment “contravenes

the ultimate goal of public disclosure and use which is the

centerpiece of federal patent policy,” id.

15

As this question illustrates, Cyanamid has the pre-

emption lesson exactly backwards. It was the University

doctors who “freely disclosed” their invention to the public,

and it was Cyanamid — not state law — that “substantially

interfered with the [public’s] enjoyment of an unpatented

... conception.” The Patent Act would preempt a state law

immunizing a tortfeasor like Cyanamid, because such a

state law would “creatie] patent-like rights” and “essen-

tially redirect inventive efforts away from the careful

criteria of patentability developed by Congress,” id. at 141.

If anything, the Patent Act encourages — it certainly does

not preempt — state laws that remedy the theft of inven-

tions proceeding to the “public at large” for its free use,

that contribute to the protection of an inventor’s “right to

control whether and when he may patent his invention,”

and that disgorge and deter thieves from such mischief.

That the thief subsequently avails itself fraudulently

and perjuriously of the federal patent laws as part of its

tortious scheme creates no conflict in the respective

pursuits of the federal and state sovereigns. So leng as

litigants can prove under the Patent Act, as the University

doctors did, that they conceived the invention stolen, the

thief must find refuge in some place other than the pre-

emption doctrine.

Kewanee Oil bears on this subject. The question in

that case was whether state laws maintaining unpatented

or nonpatentable trade secrets conflict with the objectives

of the Patent Act. Noting that trade secret protection

punishes breaches of confidence and “theft and other

forms of industrial espionage,” 416 U.S. at 484, the Court

held that preemption of state trade secret law “cannot be

* Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 65 (1998).

16

justified by reference to any policy that the federal patent

law seeks to advance,” id. at 487:

Nothing in the patent law requires that States

refrain from action to prevent industrial espio-

- nage. In addition to the increased costs for pro-

tection from burglary, wire-tapping, bribery, and

the other means used to misappropriate trade se-

crets, there is the inevitable cost to the basic de-

cency of society when one firm steals from

another. A most fundamental human right, that

of privacy, is threatened when industrial espio-

nage is condoned or is made profitable; the state

interest in denying profit to such illegal ventures

is unchallengeable.

Id. (footnote omitted; emphasis supplied); see Bonito Boats,

489 U.S. at 157 (noting that preemption doctrine leaves

intact the “law of unfair competition,” which “has its roots

in the common-law tort of deceit”).

The distance between this case and any preemptive

conflict with the Patent Act is amplified by the very state-

law remedies Cyanamid says requires preemption. In

Kewanee Oil, the plaintiff brought a diversity action

against its former employees seeking injunctive relief and

damages for the misappropriation of trade secrets in

violation of Ohio law. The district court issued a perma-

nent injunction against the former employees “until such

time as the trade secrets had been released to the public,

had otherwise generally become available to the public, or

had been obtained” legally by the former employees. Jd. at

473-74. The Sixth Circuit reversed, reasoning that the

permanent injunction improperly granted monopoly

protection to the plaintiff for unpatented processes and

techniques. This Court reversed and held that Ohio's trade

secret law was not preempted. It found unobjectionable

17

the permanent-injunction remedy afforded under Ohio

law.

Nor would an award of restitution for unjust enrich-

ment arouse any conflict with the decision Cyanamid

entrusts with its fate, Bonito Boats, since neither the

state-law claims nor the relief awarded to the University

doctors “remove[d] existent knowledge from the public

domain, or . . . restrict[ed] free access to materials already

available,” Bonito Boats, 489 U.S. at 146 (internal quota-

tions omitted). Indeed, as noted above, the only source of

interference with the public’s “free access” to the Univer-

sity doctors’ invention was Cyanamid itself, which wielded

its perjuriously obtained patent to secure its own injunc-

tive relief against generic competitors and to bar all others

from using the doctors’ invention.“

Cyanamid’s last effort to manufacture a conflict

between the patent laws and Colorado law is its argument

* In pressing its “remedies field preemption” contention that the

University doctors are limited to the “exclusive remedies” afforded

under the Patent Act, Cyanamid quotes a National Labor Relations Act

case for the proposition that “‘conflict is imminent whenever two

separate remedies are brought to bear on the same activity.’” Pet. 18

(quoting Wisconsin Dep't of Indus., Labor & Human Relations v. Gould,

Inc., 475 U.S. 282, 286 (1986)).

Cyanamid’s qualification of the Gould quotation — that it is found

in “a different context,” id. — fails to acknowledge that the NLRA

imposes substantially broader preemption than permitted under the

Patent Act. Immediately before the language quoted by Cyanamid, the

Gould Court observed that “[iJt is by now a commonplace that in

passing the NLRA Congress largely displaced state regulation of

industrial relations” and in general “States may not regulate activity

that the NLRA protects, prohibits, or arguably protects or prohibits.”

475 U.S. at 286 (emphasis supplied). However, this Court has recog-

nized that in passing the Patent Act Congress adopted a preemption

approach dramatically different from the NLRA’s approach.

18

that the unjust enrichment award is improper because the

University doctors “abandoned their right to claim patent

protection” and, when they commenced this action in 1993,

were precluded under § 102(b) from obtaining a patent.

Pet. 12, 13. This argument is the product of Cyanamid’s

misunderstanding of the interaction of the patent laws

and state law.’ As Pfaff holds, an inventor has the exclu-

sive “right to control whether and when he may patent his

invention,” 525 U.S. at 65. That he chooses not to patent

but to “freely disclose[]” his invention to the public for

its free use does not confer upon a tortfeasor like Cyana-

mid a corollary right to undo his choice by stealing the

invention, patenting it as its own, and barring the public

from its free use. Nor does the inventor’s choice and the

tortfeasor’s defeasance of it either leave the inventor

remediless under state law or immunize the tortfeasor’s

misconduct under federal law. This is the central lesson of

the Court’s patent preemption cases.

Aronson disposes of Cyanamid’s argument that the

absence of action by the doctors to obtain a patent some-

how forecloses relief under state law. In that case, Quick

Point entered into a licensing contract with Aronson while

her patent application was pending. After the application

was denied, Quick Point sued to void the contract on the

ground it was preempted by the Patent Act. This Court

* It also ignores the facts. The district court found that Cyanamid

deliberately concealed its misconduct from the University Doctors for

nearly a decade. Pet. App. 94a-95a & n.5. Since they did not know

Cyanamid had fraudulently obtained a patent on their invention, the

doctors would not have known that they needed to avail themselves of

any of the patent law remedies Cyanamid now claims the doctors

should have used against it. .

* Bonito Boats, 489 U.S. at 157.

19

rejected the preemption argument — directly analogous to

Cyanamid’s — that state contract law and its remedies

“extend[ed] perpetual protection” to inventions too lacking

in novelty to merit a patent under federal law. 440 U.S. at

263. Requiring Quick Point to pay money as required

under the contract, the Court held, “is even less offensive

to federal patent policies than state law protecting trade

secrets.” Jd. at 266.

The Court’s patent law preemption cases — all of them,

including Bonito Boats — make clear that this case has

little to do with preemption. Rather, it concerns the

application of “unchallengeable” state law to tortious

misconduct that historically has been the province of the

states to deter and remedy: fraudulent misconduct leading

to a tortfeasor’s unconscionable unjust enrichment. Con-

trary to Cyanamid’s characterization of this case as one

concerning “conflict” between federal and state laws, in

fact it is one showcasing the “harmonious[]” interaction of

federal and state laws to achieve a just and equitable

consequence.

II. The existence of other patent remedies is

irrelevant.

Cyanamid attempts to bolster its misguided argu-

ment that patent law preempts the field by pointing to

various “remedies” it says the University doctors had

under patent law. Pet. 19-21. Conveniently for Cyanamid,

on its reading, none of the patent remedies actually

requires Cyanamid to be called to account for its misdeeds.

” Kewanee Oil, 416 U.S. at 487.

* Bonito Boats, 489 U.S. at 142.

20

All but one of Cyanamid’s proposed remedies result in no

more than the revocation or invalidation of the now-

expired patent. Not surprisingly, Cyanamid’s proposed

“remedies” allow Cyanamid to keep its ill-gotten gains,

with this effect: Not only would they give Cyanamid no

consequence and the doctors ne meaningful remedy, but

they also would encourage tortfeasors to impair the patent

law’s “goal of public disclosure,” Bonito Boats, 489 U.S. at

157.

Cyanamid’s argument is part of an elaborate shell

game when it comes to accountability for its misdeeds. In

opposing the unjust enrichment judgment, it argues that

§ 256 provides an adequate remedy for those whose

invention has been stolen and patented. Pet. 21. But when

faced with the fact that the district court supported its

unjust enrichment judgment on precisely those alternative

grounds, it reverses field and argues that § 256 actually

provides no disgorgement or accounting remedy at all. Pet.

24-26. Similarly, Cyanamid argues that copyright law

provides an adequate remedy for its theft of the University

doctors’ confidential manuscript, Pet. 17 n.6, but neglects

to disclose that Cyanamid itself successfully argued to the

Federal Circuit in 1999 that its ill-gotten gains were

attributable to the patent and not to copyright infringe-

ment, with the result that the court found Cyanamid liable

for copyright infringement, but awarded no damages on

that claim. This Court denied respondents’ request for

certiorari on that issue. See University of Colo. Found.,

Inc. v. American Cyanamid Co., 529 U.S. 1130 (2000). At

every turn, Cyanamid seeks to avoid being called to

account for its misbehavior by pointing to an alternate

remedy. When the University doctors seek to invoke that

alternate remedy, Cyanamid insists it is not really a

remedy after all.

———e

21

In any event, Cyanamid’s entire argument about the

existence of patent remedies misses the mark. Because

patent law does not preempt the field of invention, the

question is not whether the patent remedies are exclusive

— they are not — but whether the equitable remedy of

unjust enrichment conflicts with the purposes of the

federal patent laws. As noted above, there is no such

conflict, and Cyanamid demonstrates none. As a result,

the existence of other federal remedies, even if they were

adequate, is irrelevant to the question of preemption.

III. The judgment is entirely fair, and is consis-

tent with the policies of unjust enrichment.

Cyanamid complains repeatedly about the size of the

judgment in this case, arguing that the University doctors

received “more than they could have achieved through

patent ownership.” Pet. 14.

This argument puts the shoe on the wrong foot. The

district court found that Cyanamid hijacked an invention

bound for the public domain for free use by anyone, falsely

claimed the invention as its own, fraudulently and perju-

riously secured a patent on the invention, aggressively

enforced the patent to preclude all others from using the

University doctors’ invention and, as a result, reaped tens

of millions of dollars in profit.

If it is true the University doctors received “more than

they could have achieved through patent ownership,” so

too did Cyanamid receive more than it could have if it had

not committed its theft. Indeed, the restitutionary remedy

* Nothing in the record substantiates this assertion as fact.

Peon ne ren = SS ee

22

of disgorgement the district court awarded was a purpose-

ful calculation of the amount by which Cyanamid profited,

not from the use of the invention but from the exclusionary

benefit — the “exclusive monopoly,” Pfaff, 525 U.S. at 63 -

it achieved through its own misconduct.

The goal of unjust enrichment is not to compensate a

plaintiff for its losses. Legal remedies are adequate to do

that. Rather, under the equitable principle of unjust

enrichment, a wrongdoer who has been unjustly enriched

must make restitution to the harmed party:

Restitution, which seeks to prevent unjust en-

richment of the defendant, differs in principle

from damages, which measure the remedy by the

plaintiff’s loss and seek to provide compensation

for that loss. As a consequence, “in some cases

the defendant gains more than the plaintiff loses, |

so that the two remedies may differ in practice as

well as in principle.”

EarthInfo, Inc. v. Hydrosphere Resource Consultants, Inc.,

900 P.2d 113, 118 (Colo. 1995) (quoting 1 Dan B. Dobbs,

Law of Remedies § 4.1(1), at 555, 557 (2d ed. 1993)). Thus,

in crafting an unjust enrichment remedy, the issue is not

what losses the University doctors incurred; rather, the

issue is how much Cyanamid gained by its misconduct. See

EarthInfo, 900 P.2d at 118. This Court is no stranger to

these well-established restitutionary principles:

[Wlhere the defendant received more than the

seller’s actual loss ... damages are the amount

of the defendant’s profit. This alternative stan-

dard aims at preventing the unjust enrichment of

a fraudulent buyer, and it clearly does more than

simply make the plaintiff whole for the economic

loss proximately caused by the buyer’s fraud. In-

deed, the accepted rationale underlying this al-

ternative is simply that it is more appropriate to

give the defrauded party the benefit even of

23

windfalls than to let the fraudulent party keep

them.

Randall v. Loftsgaarden, 478 U.S. 647, 663 (1986) (inter-

nal quotation marks and citations omitted).

Under Colorado law, the trial court has discretion to

fashion an appropriate remedy for unjust enrichment. See

EarthInfo, 900 P.2d at 118. The Colorado Supreme Court

has specifically concluded that it is within a trial court’s

discretion to require a serious wrongdoer to disgorge

profits, because it would be inequitable to permit such a

wrongdoer to retain any profit from its misconduct. Id.

Applying Colorado law, and based on its findings of Cy-

anamid’s extreme culpability, the district court ordered

Cyanamid to disgorge the incremental Materna profits

attributable to the right to exclude competition. Cyanamid

did not on appeal, and it does not now, contend that the

trial court abused its discretion in awarding disgorgement.

The unjust enrichment award is entirely appropriate

under Colorado law and, as the district court found,

“conservative.” Having stolen with impunity for so long

and so well, Cyanamid’s complaint that it is being required

to disgorge its ill-gotten gains hardly raises an issue

requiring review by this Court.

IV. This is not a proper case for certiorari review.

A. The district court awarded unjust en-

richment alternatively under state and

federal law.

Any ruling on the preemption question would not

affect the outcome of this case. In addition to awarding the

University doctors unjust enrichment under Colorado law,

the district court alternatively awarded unjust enrichment

based on its conclusion that the University doctors were

24

the equitable title owners of the patent under § 256.”° In

Arachnid, Inc. v. Merit Industries, Inc., 939 F.2d 1574,

1580 (Fed. Cir. 1991)," the Federal Circuit held that

equitable title owners are entitled to “full redress” for

infringement on that title, including by means of account-

ing, constructive trust, or other equitable remedies. 939

F.2d at 1580. In the case at bar, the Federal Circuit did not

reach this ground, but equitable title provides an inde-

pendent basis for affirming the judgment.

Cyanamid argues that this Court should reverse the

district court’s alternative award of unjust enrichment

under federal law, limiting § 256 to correcting inventorship

prospectively, and stripping federal courts of their historic

power to provide equitable relief notwithstanding the

egregious unjust enrichment of a defendant like Cyana-

mid. In short, Cyanamid would have this Court turn § 256

into just another rule permitting Cyanamid to keep what

it stole.

The premise for Cyanamid’s argument is its mistaken

belief that an unjust enrichment award is “money dam-

ages for patent infringement,” Pet. 24. As this Court has

recognized, equitable relief, such as a restitutionary award

under unjust enrichment principles, does not become

“damages” simply because the relief requires a defendant

to pay monies to the plaintiff. See, e.g., Great-West Life &

Annuity Ins. Co. v. Knudson, 534 U.S. 204, 213-214 (2002)

(“[A] plaintiff could seek restitution in equity, ordinarily in

the form of a constructive trust or an equitable lien, where

In addition to alternative awards of unjust enrichment under

state and federal law, the district court also alternatively awarded

fraud damages. Pet. App. 23a.

" Suggestion for rehearing en banc denied (Fed. Cir. 1991).

25

money or property identified as belonging in good con-

science to the plaintiff could clearly be traced to particular

funds or property in the defendant’s possession.”); Chauf-

feurs, Teamsters & Helpers, Local No. 391 v. Terry, 494

U.S. 558, 570 (1990) (same).

Cyanamid cites Aro Manufacturing Co. v. Convertible

Top Replacement Co., 377 U.S. 476, 505 (1964), for the

proposition that damages for patent infringement do not

include disgorgement of profits. Aro is off point. First,

unlike Aro, the case at bar is not a patent infringement

case. Second, merely because the Patent Act does not

authorize a patentee to recover disgorgement from third

parties in infringement proceedings does not compel a

conclusion that the Act denies traditional forms of equita-

ble relief to one whose invention was stolen and patented

by another. It is perfectly reasonable that an inventor’s

equitable rights against intentional theft of an invention

should be broader than a patentee’s property rights

against a potentially innocent infringer.

Irrespective of the merits of awarding equitable relief

to an equitable titleholder, this would be a peculiar occa-

sion for the Court to exercise its certiorari jurisdiction. As

Cyanamid acknowledges, the Federal Circuit below did not

pass on this alternative ground for an unjust enrichment

award. The lower courts have addressed substantively the

issue of equitable relief available to an equitable title-

holder on two occasions: the District Court for the North-

ern District of Ohio in 1957 (Papazian v. American Steel &

Wire Co., 155 F. Supp. 111), and the Federal Circuit 13

years ago in Arachnid. Although both courts held that

equitable relief was available, in neither case did the

courts actually award equitable relief. That there is little

here for the Court to “review” is sufficient ground for

denying certiorari. See McCray v. New York, 461 U.S. 961,

ee

26

pownnee va anne Nees

963 (1983) (Stevens, J., joined by Powell and Blackmun,

JJ., on denial of certiorari: “I believe that further consid-

eration of the substantive and procedural ramifications of

the problem by other courts will enable us to deal with the

issue more wisely at a later date.”)

Moreover, while the district court below awarded such

equitable relief, it was an alternative to an award based on

independent state-law grounds. As Cyanamid’s arguments

suggest, there is substantial constitutional ground — from

a number of perspectives — to cover in any policy debate

over the holdings of Papazian and Arachnid, but the

absence of the Federal Circuit’s expertise and experience

in this debate virtually ensures that the debate would be

neither full nor fruitful.

Its arguments notwithstanding, Cyanamid all but

concedes the inappropriateness of this Court’s certiorari

intervention in suggesting that this Court “remand” the

§ 256 issue to the Federal Circuit to consider “in the first

instance.” Pet. 23. But the suggestion itself underscores

the inappropriateness of the exercise of this Court’s

jurisdiction at all: to enable Cyanamid to present an issue

worthy of certiorari review, it must first persuade this |

Court to radically enlarge patent law preemption at the

expense of the states’ traditional police powers and it must

also convince this Court to “remand” the § 256 equitable |

title issue to the Federal Circuit. Based on the Federal |

arith RON 0 Dodie

Circuit’s future review of § 256 remedies, Cyanamid might

then file another petition for certiorari. It is a remarkably

inchoate and circuitous basis for invoking the Court's

jurisdiction.

27

B. This case does not present an inter- or in-

tra-circuit split, or even an issue of con-

tinuing importance.

There is no conflict in the preemption rules applied in

the courts of appeal in this case. Indeed, as Cyanamid

itself notes, Pet. 22-23, the decision in this case did not

break new ground in refusing to preempt state law causes

of action.” Rather, it was consistent with a long line of

Federal Circuit precedents, including Dow Chemical Co. v.

Exxon Corp., 139 F.3d 1470 (Fed. Cir. 1998), cert. denied,

525 U.S. 1138 (1999), and Hunter Douglas, Inc. v. Har-

monic. Design, Inc., 153 F.3d 1318 (Fed. Cir. 1998), cert.

denied, 525 U.S. 1143 (1999). The Federal Circuit’s actual

ruling on preemption in this case came not in its 2003

opinion, but in its 1999 opinion. Pet. App. 135a. The fact

that this case is consistent with a long line of precedents

from the Federal Circuit suggests there is no need for this

Court to intervene.

Cyanamid warns that permitting inventors to obtain

equitable relief under state law will “throw a new shadow

of retrospective insecurity” over the rights of “vast num-

bers of patentees.” Pet. 22. This case presents no such risk.

First, Cyanamid’s argument is inconsistent with its

acknowledgment that the Federal Circuit has been decid-

ing preemption cases the same way for years. If the sky

were to fall, as Cyanamid warns it will, one would expect

it to have fallen. The fact that Cyanamid can point to no

flood of state tort litigation over patent inventorship

suggests the risk it identifies is minimal, if not imaginary.

* No member of the Federal Circuit voted to grant Cyanamid’s

petition to rehear this case en banc.

28

Second, the Federal Circuit has imposed strict legal

standards on claims of incorrect inventorship, requiring

that those who claim to be inventors prove their case with

clear and convincing evidence and provide evidentiary

corroboration of their claims. See, e.g., Pet. App. 135a. The

high bar imposed by these standards ensures that only the

truly egregious case involving theft and serious fraud —

such as this one — will be subject to unjust enrichment

liability. Those cases are rare — and will continue to be — so

long as this Court permits lower courts to craft adequate

remedies, as was done in this case.

C. The preemption issue is not squarely pre-

sented. '

Although preemption is now the central basis upon

which it seeks certiorari, Cyanamid put so little stock in

its preemption theory that it failed to plead preemption as

an affirmative defense. Pet. App. 195a. As a result, the

district court declined to consider Cyanamid’s preemption

argument when it was presented for the first time in a

motion to reconsider the court’s summary judgment ruling

permitting the state-law claims to proceed to trial. Pet.

App. 197a.

The law of the case doctrine also undermines Cyana-

mid’s request for certiorari review. Cf. Agostini v. Felton,

521 U.S. 203, 236 (1997). In its first appeal to the Federal

Circuit in 1999, Cyanamid argued that federal patent laws

preempted the state-law claims because state law could

not “protect” a publicly disclosed, unpatented invention.

The Federal Circuit rejected the argument. Pet. App. 140a.

In its 1999 rehearing petition, Cyanamid argued that

| | |

29

rehearing should be granted because the decision “per-

petuated, and indeed furthered, the district court’s im-

proper damages analysis by suggesting that if plaintiffs

can establish themselves as ‘inventors’ [under] federal

patent law standards, they may be entitled to damages for

state law claims ... — a patent-like remedy that is pre-

empted.” The Federal Circuit denied the petition. Cyana-

mid did not seek certiorari review of the 1999 decision.

Accordingly, the decision became the law of the case.

Cyanamid again committed a procedural default in its

2003 appeal to the Federal Circuit. In its entire 62-page

opening brief, Cyanamid devoted two paragraphs to

preemption. It argued only that the common law awards

should be preempted because they afforded “patent-like

protection” “in the form of damages” for the value of

unpatented intellectual property. Cyanamid did not argue

that the patent laws preempt state laws such as unjust

enrichment. Cyanamid’s actions militate against certiorari

review. See, e.g., Davis v. United States, 495 U.S. 472, 489

(1990) (“Because this argument was neither raised before

nor decided by the Court of Appeals, we decline to address

it here.”). “

Cyanamid seeks certiorari review to advance a patent

preemption argument that would effect a sea change in

this Court’s decades-long approach to concurrent state and

federal protection of intellectual property. Cyanamid’s

ambition, however, is unmatched by the lead-up to its

petition: Cyanamid repeatedly turned down opportunities

to properly assert the defense it now claims is worthy of

this Court’s attention. As a result, its argument is not

squarely presented to this Court.

30

CONCLUSION

This Court should deny the petition.

Respectfully submitted,

MARK A. LEMLEY ROBERT N. MILLER

Counsel of Record STEPHANIE E. DUNN

KEKER & VAN NEST, L.L.P. PERKINS CorE LLP

710 Sansome Street 1899 Wynkoop Street,

San Francisco, CA 94111-1704 Suite 700

(415) 391-5400 Denver, CO 80202

HAROLD A. HADDON (303) 291-2300

SASKIA A. JORDAN

Ty GEE

HADDON, MORGAN, MUELLER,

JORDAN, MACKEY &

FOREMAN, P.C.

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(303) 831-7364