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

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Opposition Brief
- **Published:** January 1, 2004
- **Citation:** 541 U.S. 988

## Text

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.
150 East 10th Avenue
Denver, CO 80203
(303) 831-7364

! COCKLE LAW BRIEF PRINTING CO. (800) 225-6964
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.

150 East 10th Avenue

Denver, CO 80203 i

(303) 831-7364

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386001_1093%3A2. Public record. Not legal advice.