Opposition Brief — United States ex rel. Berge v. Board of Trustees of the University of Alabama
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Supreme Court, U.S.
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Sfp 12 w97
CLERK
IN THE ,
Supreme Court of the United States
OCTOBER TERM, 1997
UNITED STATES EX REL. PAMELA A. BERGE,
Petitioner,
V.
UNITED STATES OF AMERICA,
Intervenor-Respondent,
and
UNIVERSITY OF ALABAMA AT BIRMINGHAM, ET &
Respondents.
On Petition for a Writ of Certiorari to the
United States Court of Appeals
for the Fourth Circuit
BRIEF IN OPPOSITION
DAVID G. LEITCH *
WILLIAM A. BRADFORD, JR.
BARBARA F’. MISHKIN
HOGAN & HARTSON L.L.P.
555 Thirteenth Street, N.W.
Washington, D.C. 20004
(202) 637-5822
* Counsel of Record Counsel for Respondents
WILSON - EPEsS PRINTING Go., INC. - 789-0096 - WASHINGTON, D.C. 20001
QUESTIONS PRESENTED
1. Whether this Court should review the determina-
tion of the Fourth Circuit that materiality of an allegedly
false statement in this civil action was a question for the
court rather than the jury where that determination does
not conflict with the decision of any other court of
appeals and the court below found that, in any event, no
reasonable jury could find the statements at issue to be
material or false.
2. Whether this Court should review the determina-
tion of the Fourth Circuit—applying settled standards of
review—that there was insufficient evidence for a reason-
able jury to find that the statements at issue were either
false or material.
3. Whether this Court should review the determina-
tion of the Fourth Circuit that petitioner’s claim for
conversion under Alabama law was preempted by the
Copyright Act where the court below held on the par-
ticular facts of this case that her conversion claims were
“tantamount to a claim of copyright infringement.”
(i)
TABLE OF CONTENTS
Page
QUESTIONS PRESENTED ...........-.---.----.--seeeessseeeeeeessees i
Ie Ce Be IID cciicsncsccnnencesesesnennestatsccmsawsaons iv
I aaa ncasseasidendeibereminiahebaniaciagnnnicaninisnabanaiinbuti 1
COUNTERSTATEMENT ............-. Re ee re tt nD 3
I i sccnctenniennnseneinninsemnmnnsccenanseesesnethetepamnenstts 3
We, Timnas TRG nnn nanan nner ees 4
| a oe 5
D. Berge’s False Claims Act Suit -...................----... 7
REASONS FOR DENYING THE WRIT ......................... 10
I. THE COURT OF APPEALS’ REJECTION OF
PETITIONER’S CLAIMS DID NOT REST ON
ITS DETERMINATION THAT MATERIAL-
ITY IS AN ISSUE FOR THE COURT, AND
THAT DETERMINATION IS IN ANY EVENT
NOT WORTHY OF REVIEW .......................-------- 10
Il. THERE ARE NO COMPELLING REASONS
TO REVIEW THE COURT OF APPEALS’
ASSESSMENT OF THE SUFFICIENCY OF
THE EVIDENCE IN THIS CASE ...................... 16
III. THE COURT OF APPEALS APPLIED SET-
TLED LAW TO THE FACTS OF THIS CASE
IN DETERMINING THAT PETITIONER'S
STATE-LAW CONVERSION COUNT WAS
8h g 5 | | on nnnenen ne nna 26
ET I nnn sans snare cnnccenesccienscenssconeenccanencwcoenees 30
(iii)
pene ei
iv
TABLE OF AUTHORITIES se
CASES: Page
Amarel v. Connell, 102 F.3d 1494 (9th Cir. 1997).. 20
American & Foreign Ins. Co. v. Bolt, 106 F.3d 155
CR ID dectcenscencsitsinitectettncsieteicelecntihilnniatntiin 20
Anderson V. Nidorf, 26 F.3d 100 (9th Cir. 1994),
cert. denied, 514 U.S. 1085 (1995) ...............0.20002... 28, 29
Aparicio v. Norfolk & W. Ry., 84 F.3d 803 (6th
CI BI sscscnisissineccipscrnsccelvidicinniisnaleinasasitahsaamiatasbanitialidamiaited 22, 23
Bateman v. Mnemonics, Inc., 79 F.3d 1532 (11th
ON oan 28
Benedi v. McNeil-P.P.C., Inc., 66 F.3d 1378 (4th i
Cir. 1995) ......... EAL IRS RR ALL TET DS RON TRS ORERI 18
Bierle v. Liberty Mut. Ins. Co., 992 F. 2d 873 (8th
BRR RRA Der Penne ee We” Ae eR ONCE 21
Black v. Zaring Homes, Inc., 104 F.3d 822 (6th
Cir. 1997), pet. for cert. filed, 66 U.S.L.W. 3109
(U.S. July 24, 1997) (No. 97-159) _....... MFA 21
Bogosian V. Mercedes-Benz of N. Am., Inc., 104 ‘
ee Ge I veitnsinnininissatsseneianneniiane 19-20
Butler v. Dowd, 979 F.2d 661 (8th Cir. 1992), cert.
denied, 508 U.S. 980 (1998) ~.................2................ 23
Caudill v. Farmland Indus., Inc., 919 F.2d 83 (8th
a eens are ree nT RT 23, 25, 26
Central Office Tel., Inc. v. AT&T, 108 F.3d 981
Be HE: SEINE D siciisncarnidnhcacindenatheceemncebnnianennae 25
Colvin Vv. Housing Auth. of City of Sarasota, Flor-
ida, 71 F.3d 864 (11th Cir. 1996) ...........0...0.... 20
Cook v. American S.S. Co., 53 F.3d-733 (6th Cir.
IE sevcsccbecatAeaisateooditbak wcabachale deeeseaunieraaaniadaeiaiicednndags: 20-21
Curtis v. Electronics & Space Corp., 113 F.3d 1498
Re Sy SERGI oA cna ee eae 20
Daboub v. Gibbons, 42 F.3d 285 (5th Cir. 1995) ...... 28, 29
Dace Vv. ACF Indus, Inc., 722 F.2d 374 (8th Cir.
1983), as supplemented on rehearing, 728 F.2d
ee SA HS SIE Sisrerersceton consent: 23, 25
Data Gen. Corp. v. Grumman Sys. Support Corp.,
86 F.3d 1147 (ist Cir. 1994) ................................... 28
Delta Airlines, Inc. Vv. August, 450 U.S. 346
SUNISUE TT ahdciashdeeskiseiadacncascdedncaaseledaetselaaasrGacendaeaaab eaten said 18
v
TABLE OF AUTHORITIES—Continued
Doan v. Seagate Technology, Inc., 82 F.8d 974
(10th Cir. 1996), cert. denied, 117 S. Ct. 684
bOI OPH Nanni BRAT AR NITE a
Dragon V. Rhode Island Dep’t of Mental Health,
Retardation & Hosps., 936 F.2d 321 (1st Cir.
1991) .. sce hainwitie aaa cietaiaceiasiamhanatanieaatiakin LL aaaiaa tai
Duke v. Uniroyal, Inc., 928 F.2d 1413 (4th Cir.),
cert. denied, 502 U.S. 963 (1991) ..........................
Ealy v. Richardson-Merrell, Inc., 897 F.2d 1159
(D.C. Cir.), cert. denied, 498 U.S. 950 (1990)...
Eastman Kodak Co. v. Goodyear Tire & Rubber
Co., 114 F.3d 1547 (Fed. Cir. 1997) ...................
Emmel v. Coca-Cola Bottling Co. of Chicago, 95
fy - ££. yt 3 | Peete
FW/PBS, Inc. v. City of Dallas, 493 U.S. 215
ORD scikcicinccuscuttihtninsdiachiademencraenamuilit ieetiaa odtaieomatiaass
G.S. Rasmussen & Assocs. V. Kalitta Flying Serv.,
Inc., 958 F.2d 896 (9th Cir. 1992), cert. denied,
BE FRR MOT ase PEL Et
Harolds Stores, Inc. v. Dillard Dept. Stores, Inc.,
82 F.3d 1533 (10th Cir.), cert. denied, 117 S. Ct.
BE SC eile etaicci sn xenical ener,
Harper & Row Publishers, Inc. v. Nation Enters.,
723 F.2d 195 (2d Cir. 1983), rev’d on other
grounds, 471 U.S. 539 (1985) ...................—...........
Harris v. Chapman, 97 F.3d 499 (11th Cir. 1996),
cert. denied, 117 S. Ct. 2422 (1997) ....................
Hervey Vv. Estes, 65 F.3d 784 (9th Cir. 1995) _.....
Hill v. Spiegel, Inc., 708 F.2d 233 (6th Cir. 1983) ..
K & T Enters., Inc. v. Zurich Ins. Co., 97 F.3d 171
OE Se SI acndaivcscatendieesientah lanterns,
Katz v. City Metal Co., 87 F.3d 26 (1st Cir. 1996) ..
Kientzy v. McDonnell Douglas Corp., 990 F.2d
ky Rare we en) eee ene
Kregos Vv. Associated Press, 3 F.3d 656 (2d Cir.
1993), cert. denied, 510 U.S. 1112 (1994) ...._.......
Kungys V. United States, 485 U.S. 759 (1988) ....10,
Kyles v. Whitley, 514 U.S. 419 (1995) ....................
Lester v. RTC, 994 F.2d 1247 (7th Cir. 1993)
Page
20
24
17
19
20
20
18
28, 29
27-28
28
12, 14
16
ai
vi
TABLE OF AUTHORITIES—Continued
Page
Mattern v. Eastman Kodak Co., 104 F.3d 702 (5th
Cir. 1997), pet. for cert. filed, 66 U.S.L.W. 3108
(U.S. July 21, 1997) (No. 97-126) ...........00000000..... 25
McAnally v. Gildersleeve, 16 F.3d 1493 (8th Cir.
2 | EME Se eS Ue CLE TSI Ee aa 23
McDaniels v. Flick, 59 F.8d 446 (3d Cir. 1995),
cert. denied, 116 S. Ct. 1017 (1996) —......00000000... 24
Melton Vv. Teachers Ins. & Annuity Ass’n, 114 F.3d
re CRE Gals SE sericcniscnscobditcanadniaaeniidaneionak, 20
National Basketball Ass’n v. Motorola, Inc., 105
Fe OG, Te I BOD wiiacsntecotctnericenntecantn obdetons 27
National Car Rental Sys., Inc. v. Computer Assocs.
Int'l, Inc., 991 F.2d 426 (8th Cir.), cert. denied,
kth S| ern oe 28
O’Brien v. City of Grand Rapids, 23 F.3d 990 (6th
CFEIR, TERIO GD .sccscesesesniaioctenntasaiadbisuanmaumenaiane acneaiannes 21
Oddo v. Ries, 748 F.2d 630 (9th Cir. 1984) ............. 29
Penney V. Praxair, Inc., 116 F.3d 330 (8th Cir.
EE suvisesenechuansiacincaal sausage dana as 20
Redman v. John D. Brush & Co., 111 F.3d 1174
CE Se) Penman NO nn Pokey Peewee ay UN 20
Rosciszewski v. Arete Assocs., Inc., 1 F.8d 225
<. 2+ Se | Ren I ORe 27, 28
Schwimmer v. Sony Corp., 459 U.S. 1007 (1982).... 24
Sherbert v. Alcan Alum. Corp., 66 F.3d 965 (8th
CARB, II sccckiece sar<issitustiguisensmielaieerunia tania eae naan anaes 21
Simms V. Village of Albion, 115 F.3d 1098 (2d Cir.
REE PF invicnsssinaciioresinsiinsigietnninisaiiamasmaiane eat net 20 S
Sinclair v. United States, 279 U.S. 263 (1929)...... = 12
Smelser v. Norfolk S. Ry., 105 F.3d 299 (6th Cir.
1997), pet. for cert. filed, 65 U.S.L.W. 3827
(U.S. June 4, 1997) (No. 96-1949) ........... Thuabteen 22, 23
Smith v. World Ins. Co., 38 F.3d 1456 (8th Cir.
BID isicssins sete iesissincesannicshapuiaeesaenadasinedaiaciee aaa 21
Sommerville v. United States, 376 U.S. 909 (1964)... 12
Sumner Vv. Mata, 449 U.S. 589 (1981) .......000000 cu... 16
Taquino Vv. Teledyne Monarch Rubber, 893 F.2d
REGS Cee TA. BRO ccenctncvindticomiadesous 29
TSC Industries, Inc. v. Northway, Inc., 426 U.S.
GS COD wisiencicicirnnsxinncenccnitentganiiieaueenes 15
Die erinebibtinnneaaieaaeeeierae nei
laa
vii
TABLE OF AUTHORITIES—Continued
Page
Tyger Constr. Co. v. United States, 28 Fed. Cl.
| SNR SERCO CAM To eee 10
United States ex rel. Butler v. Hughes Helicopter
Co., No. CV-89-5760-SVW, 1993 WL 841192
(C.D. Cal. Aug. 25, 1993), aff'd on other
grounds, 71 F.3d 821 (9th Cir. 1995)... 14
United States Railroad Retirement Bd. v. Fritz,
WGP Wis We CRD oovvnscancncctcgeecsete cerns veeeeccocescoc ecu... 24
United States v. Abadi, 706 F.2d 178 (6th Cir.),
cert. denied, 464 U.S. 821 (1983) 14
United States v. Data Translation, Inc., 984 F.2d
8 A, eee 10
United States v. Gaudin, 515 U.S. 506 (1995) ....10, 11, 12,
18, 15
United States v. Johnston, 268 U.S. 220 (1925)...... 16
United States v. Norris, 749 F.2d 1116 (4th Cir.
1984), cert. denied, 471 U.S. 1065 (1985)... 15
United States v. Stelmokas, 100 F.3d 302 (3d Cir.
1996), cert. denied, 117 S. Ct. 1847 (1997)... 18-14
Villaneuva v. Brown, 103 F.3d 1128 (3d Cir.
reds op tactlgh etc aacatide tae ee 20
Walter v. Holiday Inns, Inc., 985 F.2d 1232 (3d
BI I i ctettoeaetites tobee cas AO FRU on, Rhone an 24, 25
Wisniewski v. United States, 353 U.S. 901 (1957). 24
STATUTES:
Be Nt Nii isecovcircnctteidvovemecseadcbevndesseed Ss 27, 28
Be Totes BOC CD onvncdccececveccccssccccocesecesgeounsee.cccc..: 9
RULES AND REGULATIONS:
ce EE TE er 16, 28
Sup. Ct. R. 14.5 ............ 3
RPMI, Sie Br IED Gi vvensnceccvccecacceserccscsonercevessececeos.c.cs.. 2
Ae 22
45 C.F.R. § 74.51(d) (1) (1995)... 7
OTHER AUTHORITIES:
III Paul Goldstein, Copyright (2d ed. 1996)............. 28
John M. Harlan, Manning the Dikes, 18 Record of
N.Y.C. Bar Ass’n 541 (1958) .......0...000.000000.00.. 23-24
—
viii
TABLE OF AUTHORITIES—Continued |
Page
1 Melville B. Nimmer & David Nimmer, Nimmer
YG. , ODN RE oe a I RTI 28, 30
Robert L. Stern, et al., Supreme Court Practice
4, fA | RR reeenennnten ence meee ee Enea 2, 12, 23
9A Charles A. Wright & Arthur R. Miller, Federal
Practice and Procedure (2d ed. 1995) ................. 25, 26
IN THE
Supreme Court of the United States
OCTOBER TERM, 1997
No. 97-336
UNITED STATES EX REL. PAMELA A. BERGE,
” Petitioner,
UNITED STATES OF AMERICA,
Intervenor-Respondent,
and
UNIVERSITY OF ALABAMA AT BIRMINGHAM, ET AL.,
Respondents.
On Petition for a Writ of Certiorari to the
United States Court of Appeals
for the Fourth Circuit
BRIEF IN OPPOSITION
Respondents the Board of Trustees of the University of
Alabama at Birmingham, Robert F. Pass, Sergio B.
Stagno, Charles A. Alford, and Karen B. Fowler respect-
fully request that the Court deny the petition for a writ
of certiorari seeking review of the decision of the United
States Court of Appeals for the Fourth Circuit in this case.
JURISDICTION
Petitioner correctly notes that she received an exten-
sion of time within which to file a petition for writ of
certiorari until July 23, 1997. Pet. 2. While petitioner
filed by that date a document so styled, that document
did not conform to the Rules of this Court. In particular,
2
this Court’s Rule 34.1(g) requires that “each document”
must indicate “the name of an attorney who is counsel of
record for the party concerned (who must be a member
of the Bar of this Court),” except in circumstances not
present here. Sup. Ct. R. 34.1(g) (emphasis added). The
petition filed on July 23, 1997—the jurisdictional dead-
line—identified as counsel of record an attorney who
was not a member of this Court’s Bar, and therefore did
not conform to the requirements of the Rules.
We are aware that commentators have described a
practice whereby such deficient pleadings are accepted
for filing pending bar admission. See Robert L. Stern, et
al., Supreme Court Practice 313, 734 (7th ed. 1993).’
These commentators also report that “the date of original
submission * * * will be considered as the date of
docketing for purposes of satisfying filing deadlines.”
Id. at 734 n.6.2 We are unaware, however, of any
authority in this Court’s rules for permitting the filing of
a petition deficient in this regard to satisfy jurisdictional
filing deadlines. Instead, as noted above, this Court’s
Rules expressly provide that a pleading must be filed by
counsel of record who is a Member of the Bar. The
petition filed in this case simply did not conform to the
requirements of this Court’s Rules.
Nor can it be said that counsel of record’s failure to
become a member of the Bar of this Court in a timely
1A variation of that practice appears to have been followed in
this case. While the petition was filed on July 23, 1997, the case
was not docketed upon filing, apparently because counsel of record
was not a Member of the Bar. The case was eventually docketed
on August 22, 1997—30 days after the petition was filed—although
counsel of record still had not been admitted to the Bar at that time.
2 These commentators note, however, that “there is no excuse
for an attorney waiting until the last minute to apply for member-
ship in the Supreme Court Bar.” Supreme Court Practice at 313.
See also id. at 734 (“this practice is discouraged and counsel are
well advised to apply for membership in the Bar before filing any
document”).
|
|
|
3
fashion is simply a matter of “form” that can be cor-
rected by the procedure indicated in Rule 14.5. While
respondents have no reason to question the qualifications
of petitioner's counsel of record, who has in fact now
been admitted to the Bar of this Court, we daresay that
membership in the Supreme Court Bar is an obligation
that cannot be ignored and a privilege that cannot be
assumed. In any event, so far as respondents are aware,
the procedure for correction of deficiencies in “form”
was not invoked in this case.
At the earliest, then, a petition conforming to the Rules
of this Court was not on file before counsel of record’s
admission to the Bar of this Court on August 29, 1997.
Because the petition filed on the jurisdictional deadline
did not comply with Rules of this Court going to more
than mere matters of “form,” the petition is jurisdic-
tionally out of time.
COUNTERSTATEMENT
A. Background. This False Claims Act lawsuit, with
a pendent state claim for conversion of “ideas and
information,” was brought by petitioner after two and a
half years of alleging plagiarism before governmental,
scientific and academic institutions brought no results
satisfactory to her. J.A. 1495; 338-342; 713; 428-429.
At various times the lawsuit contained claims for breach
of contract, theft of intellectual property, fraud, tortious
interference with contractual relations, oltrage and civil
RICO. J.A. 84-87; 118-122. The gravamen of the claims,
however, was always that Berge’s academic work had
been “scooped” by respondent Fowler, another graduate
student at respondent University of Alabama at Birming-
ham (“UAB”), who allegedly used Berge’s ideas and
information in a thesis and subsequent publication. J.A.
415.
The inventive transformation of the purported damage
to Berge’s academic career into a claim on behalf of the
4
United States resulted in a $1.75 million False Claims
Act award only because the district court erroneously
failed to find the alleged false statements immaterial and
let stand a verdict that could not have been returned by a
reasonable jury. Another error of law by the district
court permitted the jury to consider a state conversion
claim that the Fourth Circuit ultimately found “clearly
preempted by federal copyright law.” Pet. App. 18a.
B. Berge’s Research. Berge was a graduate student
in nutrition at Cornell when she visited UAB in 1987.
J.A, 235, 250. She was attracted by UAB’s preeminent
research in cytomegalovirus (“CMV”) in mothers and
newborns. J.A. 780-781. CMV is the most common
cause of infectious birth defects in the country. UAB
had collected a mass of data on maternal and congenital
CMV unequaled in the world. J.A. 782. Most of this
work has been funded by the National Institutes of
Health (“NIH”) over the last 20 years. J.A. 1510-11.
Berge had “minimal experience” in data analysis and
no training in data management. Tr. 681-685; Def. Ex.
39. Her experience in epidemiology had been primarily
clerical (data collection, computer entry) or as a labora-
tory technician (testing tissue samples). J.A. 236-237.
The research she proposed to conduct at UAB (on the
effect of CMV on birth weight) had been designed by
her mentor for a grant application. J.A. 1234. The list
of data she planned to abstract came from a publication
of the National Academy of Sciences. J.A. 1236-37.
At UAB, Berge’s research received generous support.
J.A. 719-720, 723-724. By petitioner’s own admission,
respondent Stagno and others at UAB made important
intellectual contributions to her work. J.A. 375-378,
383-384, 1401-02. Berge was given access to computer-
ized data bases containing records of about 20,000
mothers (with 40 variables) and 124 congenitally in-
fected infants. J.A. 719-722. In addition, she had access
to computerized developmental data on the infected in-
5
fants, id., and to the Obstetrical Automated Record Sys-
tem (“OBAR”). J.A. 578-579.
When Berge returned to Cornell after six months at
UAB, she received computer tapes containing 11 data
sets prepared by UAB staff, but her Ph.D. work went
poorly. She was chastised by hef department chair for
spending excessive time and resources, and warned about
her disruptive and abusive behavior. J.A. 1443-44. She
complained that the Cornell faculty were untrustworthy
(J.A. 379, 1448), and she fired her main thesis advisor.
J.A. 374. Although she published (with UAB co-authors)
an article on low birth weight derived from her thesis
(J.A. 1272), a second article (on risk factors) was re-
jected by journal editors five times. Tr. 470, 491-492,
524-527, 531-538. Three rejections, highly critical of
Berge’s research design and data analysis, predated the
August 1991 publication of an article by respondents
Fowler and Pass, based on Fowler’s thesis, in the Journal
of Infectious Diseases. J.A. 385, 1485-89, 1383.
By the summer of 1989, Berge was unemployed. She
had asked UAB for a job so she could finish her thesis
there, but she was not hired. Tr. 445; J.A. 705. She
became a “research assistant professor” in the Depart-
ment of Pediatrics at New York University but was termi-
nated from that position in 1992. J.A. 298, 344.
C. Fowler’s Research. Meanwhile, Karen Fowler, a
doctoral student in UAB’s Department of Epidemiology,
decided in June 1988 to research the effects of sexually
transmitted diseases (“STDs”) on maternal CMV infec-
tion and transmission. J.A. 626-629. It was a study that
respondent Pass—a principal investigator on the CMV
grant—had designed before Berge ever arrived at UAB.
J.A. 710-711, 1225, 1232-33. Contrary to petitioner’s
Statement (Pet. 4, 9), this choice was not dictated by
Pass, but rather was one of two topics proposed by him—
the other was occupational exposure of hospital workers
to CMV. J.A. 627-628. In any event, whereas Berge
6
was studying CMV as a possible cause of low birth
weight, Fowler was looking at CMV as a result of STDs.
Berge admitted that Drs. Pass, Alford, and Stagno (among
many others) had written about risk factors for trans-
mission of CMV before she did, and that she had not
referenced all of them in her written work. J.A. 407-410.
Contrary to Berge’s assertion (Pet. 5-6), the two stu-
dents studied different mother-infant pairs. Fowler drew
both her cases and uninfected control subjects from babies
who were born between 1980 and 1988. J.A. 632. She
selected matched controls (i.e., for each CMV baby, she
found one of the same sex and race who was born within
six days of the CMV baby but who did not have CMV).
J.A. 650-653. By contrast, Berge did not use matched
controls and, in fact, failed to confirm whether her con-
trols had CMV. J.A. 395, 431, 568, 789. Moreover, her
controls were drawn from births that occurred during a
five month period in 1984-85. Tr. 577-578. Finally, Berge
extracted most of her data from a computerized data base
derived in turn from patient records, whereas Fowler
drew hers directly from original medical and laboratory
records. J.A. 642, 653, 683, 693, 702. Neither Fowler nor
anyone else at UAB ever saw or used the 11 tapes of
computerized data extracted by Berge. J.A. 726.
Two tables summarizing medical history and obstetri-
cal data were organized similarly by Berge and Fowler
because they had a common source: UAB hospital and
clinic forms. J.A. 423-427, 562-565. Moreover, Berge
and Fowler examined many of the same variables be-
cause they were commonly used in perinatal studies, and
the “case control” method and statistical analyses used
by both are among the most commonly used research
designs in epidemiology. J.A. 611-615, 718.
Although Berge claims that Fowler’s research design
was based on hers (Pet. 5); the established chronology
demonstrates the impossibility of such reliance. Fowler
developed her research plan in 1988 and submitted it to
a
7
her Ph.D. committee in January 1989. J.A. 639, 1449-
84. She had completed her data collection and initial
analyses by summer 1989, when she briefly reviewed
Berge’s dissertation, among others. Berge’s dissertation
was of no interest to Fowler because it was on a different
topic, was by a nutritionist, used an unreliable database,
and was organized in a nontraditional format. Fowler
took no notes on, or copies of, Berge’s dissertation and
did not use it in her work. J.A. 670-671, 632-685.°
D. Berge’s False Claims Act Suit. Berge’s faltering
academic career and her quest for redress of perceived
injustices ultimately led her to seize upon the fact of
NIH funding of UAB’s research as the basis for redress.
Because the data Berge abstracted and the computer
services provided by UAB were funded by NIH, and
because NIH-supported scientists were co-authors on her
paper, UAB included descriptions of her proiect in annual
progress reports to NIH.* J.A. 514-516, 1509-13. Berge
ultimately settled on charging UAB with submitting four
“false claims” in those reports to NIH. None of the state-
ments on which Berge focused, however, were either false
or material to any NIH funding decision.
The first statement on which Berge relied was a state-
ment that a “vast amount” of data had been transferred to
“unified computerization.” As described above, however,
there was a firm foundation for this statement given the
status of UAB’s data collection and organization. In
any event, this statement was at most a matter of opinion
’ Contrary to petitioner’s assertion (Pet. 5, 7), nothing in an
internal UAB inquiry report addresses whether Fowler ever saw
Berge’s dissertation. J.A. 1244-46. Rather, that report states
that Fowler never saw the OBAR records used by Berge or the
computer tapes containing Berge’s derived data sets. J.A. 1245.
* According to testimony by an NIH official at trial, the purpose
of progress reports is to describe briefly how grant monies were
spent the previous year and not to report on the identity of particu-
lar graduate students who may have been involved in generating the
data. J.A. 596-599. See also 45 C.F.R. § 74.51(d)(1) (1995).
8
that was not in any meaningful sense “false.” It was
also immaterial to NIH’s funding decision, because—as
the NIH program officer testified—the basic purpose of
the grant was collecting data, not its computerization.
J.A. 594-595, 600-601, 1513.
Berge complained as her second alleged false claim
that she was not identified by name when the collabora-
tive work was first mentioned in a progress report to the
NIH. The failure to include Berge’s name did not make
the progress report false. As the Fourth Circuit noted,
“t]he report, in fact, did not attribute the abstract to any
of its authors; it simply ‘abstracted’ the study for the
purpose of reporting on project activity.” Pet. App. 14a.
In any event, the responsible NIH official testified that
the names of graduate students involved were of no interest
to NIH, which simply wanted to know how grant funds
were spent. J.A. 596-601. Thus, this purported false
claim was neither material nor false.
A third alleged false claim—which the Fourth Circuit
called “inexplicable” (Pet. App. 14a)—-was that when
Berge’s work was reported to NIH, and fully attributed
to her, the implications for UAB’s CMV studies were not
fully explained to NIH. But the reporting was through
Berge’s own abstract presented verbatim in her own
words (J.A. 285-287), and she did not mention any
“implications” of her work that she later claimed should
have been spelled out for NIH. Whether or not she later
came to believe that certain implications followed from
her work, “[a]n ex post facto realization of the possible
importance of this implication cannot support a charge
of falsity at the time the report was submitted.” Pet. App.
15a. UAB’s report of Berge’s work was truthful.
Berge’s fourth alleged false claim was that UAB mis-
led NIH by reporting an abstract of Fowler’s allegedly
“plagiarized” work. As detailed above, however, this claim
finds no support in the record. See Pet. App. 15a (“the
evidence is patently clear that there was no plagia.ism
by Fowler and thus no false statement by UAB”).
———————————————E
9
After Berge filed her complaint, an investigation by
the HHS Inspector General concluded there was no basis
for a criminal proceeding and that “many of the assump-
tions behind [Berge’s] allegations [are] in error or exag-
gerations of the truth.” J.A. 179. The civil remedies
division of the Inspector General’s office also declined
interest in civil litigation and recommended “that no
government case be pursued.” J.A. 186, 189. The United
States declined to intervene in the district court pro-
ceedings.© As the United States noted in its Court of
Appeals brief, “none of the scientific or administrative
bodies to which [Berge] complained found that Fowler had
plagiarized Berge’s work * * * and [NIH] concluded
that her alleged false claims would not have influenced its
funding decisions in this case.” The United States also
told the Fourth Circuit that the NIH “determined that
the information Berge alleged was false or misrepresented
was not material to its funding decisions.” Brief for the
United States 5, 34; see also J.A. 1509-13. Indeed, NIH
continued to fund the grant in question at the time of
trial (J.A. 445), almost five years after Berge first made
her plagiarism charge and more than two years after she
filed her complaint.
While the jury returned a verdict for Berge, the Fourth
Circuit on appeal reversed in all respects. In particular,
it found that there was insufficient evidence from which
5 While petitioner claims that this declination was based on a
“pro se complaint,” Pet. 8, it was in fact based on the government’s
own investigation after it received all of Berge’s “evidence.” J.A.
429-430, 179. Moreover, Berge’s complaint was amended after she
became represented by counsel. J.A. 10. Although the United States
could have intervened at the trial level after it received the Amended
Complaint (31 U:S.C. § 3730(c)(3)), it did not do so. In fact, the
disinterest of the United States in Berge’s claims, nominally brought
for its benefit, is remarkable. In its brief before the Fourth Cir-
cuit to defend the constitutionality of the False Claims Act, the
United States represented that “the Government takes no position
on the merits of the appeal.” Brief for the United States as
Intervenor/Amicus 1.
10
a reasonable jury could find that the statements on which
Berge based her False Claims Act suit were either false
or material, and that Berge’s pendent Alabama conver-
sion claim was preempted by the Copyright Act.°
REASONS FOR DENYING THE WRIT
I. THE COURT OF APPEALS’ REJECTION OF PETI-
TIONER’S CLAIMS DID NOT REST ON ITS
DETERMINATION THAT MATERIALITY IS AN
ISSUE FOR THE COURT, AND THAT DETERMI-
NATION IS IN ANY EVENT NOT WORTHY OF
REVIEW
Petitioner claims that this Court should review the
Fourt’ Circuit’s conclusion that materiality in this civil
action is an issue for the court rather than the jury. Pet.
21-24." It is plain on the face of the Fourth Circuit’s
Opinion, however, that the court’s resolution of that
question did not affect its decision in this case. This
® Because of its disposition of the case, the Fourth Circuit de-
clined to reach respondents’ arguments that the district court erred
in (1) failing to set aside a damages award that was flawed in a
number of respects; (2) refusing to admit the OIG report concern-
ing Berge’s claims; (3) instructing the jury that intangible rights
can be the subject of a conversion action under Alabama law and
that loss of employment and mental anguish are compensable
under Alabama conversion law; and (4) determining that there was
legally sufficient proof of conversion. Pet. App. 10a n.1. Brief of
Appellants 32-39; Reply Brief of Appellants 13-18. Even if the
Court were to grant the petition and reverse the Fourth Circuit’s
judgment, therefore, the case would have to be remanded for the
Fourth Circuit’s consideration of these issues under federal and
Alabama law.
7It is undisputed in this case that the False Claims Act imposes
liability only for false statements that are material to the deci-
sionmaker. See Pet. App. 10a; J.A. 754; United States v. Data
Translation, Inc., 984 F.2d 1256, 1267 (1st Cir. 1992); Tyger
Constr, Co. v. United States, 28 Fed. Cl. 35, 55 (1993). In general,
a false statement is considered to be material when it “has a natural
tendency to influence, or was capable of influencing, the decision of
the decisionmaking body to which it was addressed.” Kungys v.
United States, 485 U.S. 759, 770 (1988); see also United States
v. Gaudin, 515 U.S. 506, 509 (1995).
———
11
case is therefore a poor vehicle for resolving the second
question presented by the petition. Even if the Court
were inclined to overlook the posture in which this ques-
tion comes to it, the issue is not worthy of review. Peti-
tioner’s reliance on this Court’s decision in United States
Vv. Gaudin, 515 U.S. 506 (1995) (materiality in a crim-
inal trial is an issue for the jury), ignores the Gaudin
Court’s careful delineation of the scope of its decision
and depends on a reading of the case that has not been
endorsed by any court of appeals.
1. The Fourth Circuit’s determination that the mate-
riality of the alleged false statements should not have
been submitted to the jury made no difference to the
outcome of the case below. After reaching its conclu-
sion that “the determination of materiality * * * is one
for the court,” Pet. App. 12a, the Fourth Circuit noted
that “even the Gaudin Court acknowledged that there
always remains as a threshold question of law whether
the case for materiality is ‘so weak that no reasonable
juror could credit it.’” Id. (quoting Gaudin, 515 U.S. at
517). In these circumstances, the Gaudin Court stated,
“even on our view of the matter the case should not have
gone to the jury.” Gaudin, 515 U.S. at 517. That is
precisely the conclusion reached by the Fourth Circuit
below. Regardless of whether materiality is ultimately a
question for the court or the jury, the Fourth Circuit
found, on the particular facts of this case, that the alleged
false statements “are so lacking in materiality, indeed,
are not even false, that no reasonable jury could have so
found.” Pet. App. 13a.
Thus, even if the Fourth Circuit had accepted peti-
tioner’s argument that materiality is an issue for the jury,
it would have reversed the jury’s determination due to
the insufficiency of the evidence as to both materiality
and falsity. This case, therefore, is a particularly poor
vehicle for taking up the question whether materiality in
civil actions under the False Claims Act is a question for
12
the court or a jury in cases—unlike this one—where that
distinction might matter, i.e., where the evidence would
permit a reasonable jury to find the statements at issue
material and false. It is the practice of this Court to deny
certiorari where the resolution of the issue presented is
“irrelevant to the ultimate outcome of the case.” Supreme
Court Practice at 173 (citing Sommerville v. United States,
376 U.S. 909 (1964)). Here, the Fourth Circuit's reso-
lution of the second question petitioner would present
not only did not affect the ultimate outcome of this case
but, as we explain next, is one with which the courts of
appeals are in agreement.
2. The issue identified by petitioner, even if it had
affected the outcome of the decision below, does not
merit review under this Court’s established guidelines for
exercise of its discretionary certiorari jurisdiction. Peti-
tioner complains that the Fourth Circuit improperly relied
on this Court’s decision in Kungys v. United States, 485
U.S. 759, 772 (1988) (holding in denaturalization case
that “[it is proper to treat] the issue of materiality as
a legal question”) (citation omitted), and that it should
have instead concluded that Gaudin effectively overruled
Kungys. Pet. 21. Petitioner relies on the fact that Gaudin
“explicitly repudiated” a decision—Sinclair v. United
States, 279 U.S. 263 (1929)—on which Kungys had
relied. Pet. 21-23.
What petitioner fails to account for, however, is that
the Gaudin Court declined to overrule Kungys itself, de-
spite its express recognition that Kungys “relied upon
* * * our prior decision in Sinclair.” Gaudin, 515 US.
at 522. On the contrary, the Court noted that the deci-
sion in Kungys and the decisions in Gaudin and Sinclair
arose in very different contexts. Observing that “the
courts’ power to resolve mixed-law-and-fact questions in
civil cases [like Kungys] is not at issue here” and that
“civil and criminal juries’ required roles are obviously
not identical,” id. at 516-517, the Court had no difficulty
concluding that a different result is possible in a civil
13
case because of the absence of the “constitutional rami-
fications” that are presented when the issue arises in the
context of “an adjudication to which the Sixth Amend-
ment right to jury trial attaches.” /d. at 522. Thus, it is
clear from the face of Gaudin that the Court there did
not purport to determine its application in the civil
context, but instead left undisturbed its earlier holding
in Kungys.*
There is no compelling need for this Court to take up
that issue now. The Fourth Circuit below did not ques-
tion the application of Gaudin in the criminal context in
which it was decided, and recognized that its contrary
holding in a criminal case “can no longer stand as a
result of” Gaudin. Pet. App. lla. It also recognized,
however, that this Court’s decision in Gaudin resolved
the issue only in the context of a criminal trial and took
pains to note that the “constitutional ramifications” could
well be different in the civil context. Jd. The Fourth
Circuit therefore held that “in the context of the civil
False Claims Act the determination of materiality * * *
is one for the court.” 7d. at 12a.
On that question, there is no conflict in the lower
courts. Petitioner cites no decision of any federal court
of appeals extending the holding of Gaudin to civil
actions, and we are aware of none. On the contrary,
those courts of appeals that have considered after Gaudin
whether materiality in a civil action is a matter for the
court or the jury have agreed with the Fourth Circuit’s
determination that the issue remains one for the court,
as in Kungys. See United States v. Stelmokas, 100 F.3d
302, 316 (3d Cir. 1996) (“Gaudin did not affect the
Kungys holding * * *. Quite the contrary is true be-
cause the Gaudin court discussed Kungys at length and
made it clear that it was distinguishing Kungys because
8 At most, even in netitioner’s view, the Gaudin Court left the
question unresolved in the civil context. See Pet. 21 (“materiality
of false statements in civil cases is a question * * * [that] was
expressly left open in [Gaudin]’’).
14
* * * Gaudin was concerned with a defendant’s Sixth
Amendment right to have a jury determine materiality in
a criminal proceeding”), cert. denied, 117 S. Ct. 1847
(1997); Hervey v. Estes, 65 F.3d 784, 789 n.4 (9th Cir.
1995) (“Gaudin is not applicable to a civil proceed-
ing”).° There is, accordingly, no disagreement in the
courts of appeals concerning application of Gaudin in
the civil context. Only three circuits have opined on the
question, and each has reached the same conclusion:
that Gaudin does not apply to civil proceedings. There
is no “compelling reason” for this Court to intervene at
this time to review the unanimous judgment of those few
courts of appeals that have had occasion to consider the
implications for civil actions of this Court’s relatively
recent decision in Gaudin.
| Rae ee eA RT I NI
3. In all events, the Fourth Circuit’s decision is cor-
rect under current law. Where materiality is in issue in
civil matters brought “under * * * statutes dealing with
misrepresentations to public officers,” Kungys, 485 U.S.
at 772, this Court has directed that the issue is to be
decided by the court as a matter of law. Id. The mate-
riality of a false statement to the government is a threshold
question, a “judicially-imposed limitation to insure the
reasonable application of the statute.” United States v.
Abadi, 706 F.2d 178, 180 n.2 (6th Cir.), cert. denied,
464 U.S. 821 (1983) (quoted with approval in Kungys, ;
485 U.S. at 772). Especially where it involves consider- |
ation, in light of statutory and regulatory provisions, of
the effect that undisputed statements could have on gov-
ernment action, the determination of materiality is pri-
marily a legal rather than a factual inquiry. In this
context, it involves consideration not of what a reason-
able person would have done or the actual effect of al-
®The application of the holding of Kungys to the particular
context of civil False Claims Act cases has been endorsed by the
only other court to consider the question. United States ex rel.
Butler v. Hughes Helicopter Co., No. CV-89-5760-SVW, 1993 WL
841192, at *15 (C.D. Cal. Aug. 25, 1993), aff’d on other grounds,
71 F.3d 321 (9th Cir. 1995).
a eT
15
legedly false statements—prototypical jury questions °—
but rather consideration of what legal alternatives, if any,
would be available to the government, and determination
of the natural tendency of a statement to influence govern-
ment action.
Accordingly, nearly all courts that considered the issue
prior to 1995 had determined in the context of both civil
and criminal cases under the False Claims Act that ma-
teriality is a question for the court, see, e.g., United
States v. Norris, 749 F.2d 1116, 1122 (4th Cir. 1984),
cert. denied, 471 U.S. 1065 (1985), and the Court
endorsed that rule in Kungys. As noted, application of the
settled rule of Kungys to civil cases is not undermined by
Gaudin. The holding of Gaudin rests explicitly on the
constitutional rights of the criminal defendant to have a
jury determination of all elements of a crime. Because
of the criminal context, the Court expressly declined to
accept the government’s argument that materiality—even
if a question of law—is necessarily for the court, reasoning
instead that the Constitution requires judgments about
all elements of a crime, whether legal or factual, to be
submitted to the jury. See 515 U.S. at 514 (jury is not
“mere factfinder” in criminal case). The Court also
expressly declined to overrule its decision in Kungys,
leaving undisturbed the settled rule that in the civil con-
text, the issue of materiality is for the court. Thus, the
Fourth Circuit’s decision in this case was a faithful appli-
cation of existing law on which the lower courts are in
agreement. In all events, for the reasons explained above,
the issue on which it opined did not affect the outcome of
the decision below and does not warrant review by this
Court.
10 See TSC Industries, Inc. v. Northway, Inc., 426 U.S. 438, 450
(1976) (materiality of omission from proxy statement is a jury
question because it involves judgments about how a reasonable
shareholder would react).
en
16
Il. THERE ARE NO COMPELLING REASONS TO
REVIEW THE COURT OF APPEALS’ ASSESS-
MENT OF THE SUFFICIENCY OF THE EVIDENCE
IN THIS CASE
In reversing the judgment in favor of petitioner, the
Fourth Circuit determined that its “de novo review * * *
of the alleged false statements plainly shows that they
were not material to [NIH]’s funding decisions, and fur-
thermore are so lacking in materiality, indeed, are not
even false, that no reasonable jury could have so found.”
Pet. App. 12a-13a. “[I]t is,” the court held, “abundantly
clear that substantial evidence upon which the jury could
have found for Berge is lacking.” /d. at 17a.
The Fourth Circuit’s decision is therefore simply a
decision about the sufficiency of the evidence in this
case. Its discussion of the evidence recounts no consid-
eration of any disputed legal issues, rejects no argument
of Berge’s except her claim that the evidence was sufficient
to sustain the verdict, and does not purport to part com-
pany with any other court of appeals on any issue. Berge’s
complaints about the court of appeals’ determination that
the evidence was insufficient to permit a reasonable jury
to find either falsity or materiality therefore present no
issue of significance outside of this case, and there are
no “compelling reasons” for this Court to exercise its
certiorari jurisdiction. Sup. Ct. R. 10. See also id. (“A
petition for a writ of certiorari is rarely granted when
the asserted error consists of erroneous factual findings or
the misapplication of a properly stated rule of law’).
Apparently recognizing that this Court “dofes] not grant
a certiorari to review evidence and discuss specific facts,”
United States v. Johnston, 268 U.S. 220, 227 (1925),”
11 As four members of this Court recently noted, “[t]hat policy
has been observed even when the fact-bound assessment of the
federal court of appeals has differed from that of the district
court.” Kyles v. Whitley, 514 U.S. 419, 456 (1995) (citing Sumner
v. Mata, 449 U.S. 539, 543 (1981) (in “run-of-the-mine case in
which an appellate court * * * reached an opposite conclusion
17
Berge goes to great lengths in her petition to attempt to
find a certworthy legal issue in the court of appeals’ con-
clusions about the sufficiency of the evidence. That effort
fails. The intercircuit “conflict” that Berge purports to
identify—concerning the evidence that a court of appeals
should review in determining the sufficiency of the evi-
dence to support a judgment—not only does not exist,
but also involves an argument that was not presented to
the court of appeals; the court of appeals in any event
applied the correct and well-settled standard of review
when it considered this case. Rather than an “ideal ve-
hicle” for resolving a purported “circuit controversy,”
Pet. 19, this case is a poor candidate for certiorari be-
cause petitioner would have this Court review only an
application of well-settled law that was not challenged by
her below.
1. Berge’s petition fails at the threshold because she
never identified to the court of appeals the purported
legal issue she would now present to this Court or asked
the court of appeals to apply any standard other than the
one it applied. In her court of appeals brief, Berge simply
stated that the correct standard of review was found in the
Fourth Circuit’s earlier decision in Duke v. Uniroyal, Inc..,
928 F.2d 1413, 1417 (4th Cir.), cert. denied, 502 U.S.
963 (1991): “When determining whether the evidence
is sufficient to support the jury’s verdict, the evidence must
be reviewed in the light most favorable to plaintiffs, giving
them the benefit of all inferences.” See Brief of Appellee
22. She did not urge, as she now does, that the Fourth
Circuit’s cases had applied an incorrect standard, and that
it would be erroneous for the court to review “all the
evidence” in determining whether it was sufficient to sus-
tain the jury’s verdict. In fact, her discussion of the evi-
dence included arguments grounded in the testimony of,
or exhibits offered by, the respondents (see, e.g., id. at
from a trial court * * * there [is] little reason for invocation of this
Court’s discretionary jurisdiction to make a third set of findings”’) ).
18
24)—evidence she now claims the court of appeals should
not have considered.”
It is, of course, this Court’s practice to decline to de-
cide questions not presented to or considered by the
court of appeals. See, e.g., FW/PBS, Inc. v. City of
Dallas, 493 U.S. 215, 224 (1990); Delta Airlines, Inc. V.
August, 450 U.S. 346, 362 (1981). Petitioner’s failure
to alert the Fourth Circuit to wha: she now claims is a
longstanding and well-developed conflict on the correct
standard of review ought to preclude her from raising it
here.
Nor can it be said that the court of appeals “passed
upon” the question petitioner now presents in such a way
as to permit this Court to overlook her failure to present
it below. Presumably because the parties were in agree-
ment on the correct standard of review, the Fourth
Circuit nowhere claimed to have considered the pur-
ported circuit conflict and sided with one of the alleg-
edly competing views. It simply noted that its review of
the denial of a motion for judgment of a matter of law is
de novo, cited a case articulating the same standard
urged by the parties,“ and proceeded to review the evi-
dente that had been presented below.
Petitioner apparently seizes on one sentence of the
Fourth Circuit’s opinion for her claim that the Fourth
Circuit “passed upon” the question she failed to present.
See Pet. App. 17a (“Reviewing all this evidence in the
light most favorable to Berge * * *”) (emphasis added).
That sentence, however, pointedly does not constitute, as
petitioner claims, a holding by the Fourth Circuit that it
“may review all of the evidence.” Pet. 15 (emphasis in
12 Respondents’ brief in the court of appeals articulated the same
standard. See Brief of Appellants 3. As the case was presented
to the Fourth Circuit, therefore, the parties were in agreement
as to the applicable standard of review.
18 See Pet. App. 12a, 17a, citing Benedi v. McNeil-P.P.C., Inc.,
66 F.3d 1378, 1383 (4th Cir. 1995).
19
original). It does not establish, as petitioner would have
it, that the Fourth Circuit believes it is entitled to credit
evidence favorable to the movant “even if it was contro-
verted, impeached or offered by an interested witness.”
Pet. i. And it certainly does not establish that the Fourth
Circuit “passed upon” the question—of which, from all
that appears, it was unaware—of whether its longstand-
ing standard of appellate review should be reconsidered
in light of the purportedly different holdings of other
circuits.
In short, the panel of the court of appeals that heard
this case below would be quite surprised to read what the
petition says this case is about, because the first question
presented in the petition involves an issue that was neither
pressed nor passed upon below. For this reason alone, the
Court should decline to consider it now.
2. The intercircuit “conflict” identified by petitioner
is largely of her own creation, and rests on semantic
distinctions that do not affect the outcome of cases in the
courts of appeals. Even petitioner admits that ten of the
federal circuit courts, in reviewing denials of judgment
as a matter of law, review all of the evidence and view
that evidence in the light most favorable to the verdict
winner. See Pet. 15 n.2. Significant to the question of
whether those courts are in conflict with the other
federal circuit courts of appeals, not one of the cases cited
by petitioner in footnote 2 of her petition contains any
discussion of the issue on which petitioner believes there
is a raging controversy in the circuits. These cases merely
mention in passing that the court is reviewing “all the evi-
dence” in considering whether a motion for judgment as
a matter of law should have been granted.
Many other decisions, including opinions from every
circuit, leave the word “all” out of their formulation. of
the standard of review.’* While petitioner sees in this
14 See, e.g., Ealy v. Richardson-Merrell, Inc., 897 F.2d 1159,
1161 (D.C. Cir.), cert. denied, 498 U.S. 950 (1990); Bogosian v.
vei
NCEE Rn
20
formulation some uncertainty about whether these courts
review “all of the evidence or only some subset,” Pet. 16,
we think it plain that these courts do what they say—
review “the evidence,” not just “some of” the evidence.
These decisions too contain no discussion of any ongo-
ing legal controversy concerning what evidence should
be reviewed on appeal.
Like the Fourth Circuit below, all of these courts are
apparently unaware that their ordinary formulation of the
appropriate standard of review, whether or not it speci-
fies in each instance that the court is in fact reviewing
“all the evidence,” is at odds with the views of other
circuits. The reason for this is plain: there is no conflict
among the circuits. Petitioner submits that the Sixth and
Eighth Circuits squarely reject the view that they may
review “all the evidence” (or “the evidence”) in the light
most favorable to the party that prevailed before the jury.
Pet. 15-16. Not so. As petitioner candidly admits, Pet.
16 n.6, cases from both circuits establish that those courts
too review “all the evidence” in determining whéther a
motion for judgment as a matter of law is warranted. See
Curtis v. Electronics & Space Corp., 113 F.3d 1498, 1502
(8th Cir. 1997) (“All evidence is viewed in the light most
favorable to the verdict”) (emphasis added); Cook v.
Mercedes-Benz of N. Am., Inc., 104 F.3d 472, 475-476 (1st Cir.
1997); Simms v. Village of Albion, 115 F.3d 1098, 1110 (2d Cir.
1997); Villaneuva v. Brown, 103 F.3d 1128, 1133 (3d Cir. 1997) ;
Redman v. John D. Brush & Co., 111 F.3d 1174, 1179 (4th Cir.
1997); Melton v. Teachers Ins. & Annuity Ass’n, 114 F.3d 557,
559 (5th Cir. 1997); American & Foreign Ins. Co. v. Bolt, 106
F.3d 155, 157 (6th Cir. 1997); Emmel v. Coca-Cola Bottling Co.
of Chicago, 95 F.3d 627, 629 (7th Cir. 1996); Penney v. Praxair,
Inc., 116 F.3d 330, 334 (8th Cir. 1997); Amarel vy. Connell, 102
F.3d 1494, 1517 (9th Cir. 1997): Doan v. Seagate Technology,
Inc., 82 F.3d 974, 976 (10th Cir. 1996), cert. denied, 117 S. Ct.
684 (1997); Colvin v. Housing Auth. of City of Sarasota, Florida,
71 F.3d 864, 866 (11th Cir. 1996) ; Eastman Kodak Co. v. Goodyear
Tire & Rubber Co., 114 F.3d 1547, 1559 (Fed. Cir. 1997}.
21
American S.S. Co., 53 F.3d 733, 740 (6th Cir. 1995)
(“we view all the evidence in the light most favorable to
the nonmoving party”) (emphasis added).
The two cases. cited by petitioner, moreover, are not
stray eddies outside the current of these circuits’ rulings;
rather, they are squarely in the mainstream. Time and
again, both the Sixth and the Eighth Circuits have
applied the standard applied by every other circuit in re-
viewing claims for judgment as a matier of law.” While
these two courts—like the other circuits—do not always
recite that they review “all the evidence” but some-
times simply refer to “the evidence.” their decisions
display no disagreement with the approach of the other
circuits and apply the same standard that is applied in
every circuit.
Petitioner’s contention that the circuits are in con-
flict, therefore, is simply wrong. From all that appears
in countless opinions of the court of appeals, there is
no disagreement about the standard to be applied in
reviewing denials of motions for judgment as a matter
of law.
3. In her attempt to identify a conflict, petitioner
relies on authorities that simply do not support her con-
tention. In particular, petitioner’s claims that the Sixth
8 See also Hill v. Spiegel, Inc., 708 F.2d 233, 237 (6th Cir.
1983) (viewing “the admissible evidence most favorable to the
party opposing the motion”) (emphasis added).
‘6 See, e.g., K & T Enters., Inc. v. Zurich Ins. Co., 97 F.3d 171,
176 (6th Cir. 1996) (“the evidence should be viewed in the light
most favorable to the party against whom the motion is made, and
that party given the benefit of all reasonable inferences”) (emphasis
added) ; Black v. Zaring Homes, Inc., 104 F.3d 822, 825 (6th Cir.
1997) (same), pet. for cert. filed, 66 U.S.L.W. 3109 (U.S. July 24,
1997) (No. 97-159); O’Brien y. City of Grand Rapids, 23 F.3d 990,
995 (6th Cir. 1994) (same); Sherbert v. Alcan Alum. Corp., 66
F.3d 965, 967 (8th Cir. 1995) (same) ; Smith v. World Ins. Co., 38
F.3d 1456, 1460 (8th Cir. 1994) (same); Bierle v. Liberty Mut.
Ins. Co., 992 F.2d 873, 875-876 n.7 (8th Cir. 1993) (same).
22
Circuit applies a different standard of review are not
grounded in relevant authority. Petitioner cites Smelser
v. Norfolk S. Ry., 105 F.3d 299, 306 (6th Cir. 1997),
pet. for cert. filed, 65 U.S.L.W. 3827 (U.S. June 4, 1997)
(No. 96-1949), and Aparicio V. Norfolk & W. Ry.,
84 F.3d 803, 807 (6th Cir. 1996), for her claim that the
Sixth Circuit—apparently in these two Cases only—has
parted company with the other circuits and adopted a more
limited form of review.’* These cases arose under the
Federal Employers’ Liability Act (“FELA”), and in
each case the Sixth Circuit stated its understanding that
“la] different standard [of review] applies in [FELA]
cases.” Aparicio, 84 F.3d at 807. See also Smelser, 105
F.3d at 306 (“In FELA cases, however, a different
standard [of review] applies”). Thus, to the extent these
cases said anything about the standard of review to be
applied in non-FELA cases, their views were obiter
dicta.
In addition, while both panels of the Sixth Circuit did
state that a court “looks only to the plaintiff's evidence
to make its determination,” Aparicio, 84 F.3d at 807;
Smelser, 105 F.3d at 306 (quoting Aparicio), the critical
fact common to both cases was that they discussed the
standard for granting judgment as a matter of law under
Fed. R. Civ. P. 50(a) at the close of plaintiff's case. Thus,
17 The petition in Smelser does not present the question that
petitioner presents here, and does not claim that the Sixth Circuit’s
opinion is in conflict with any other circuit on that question.
18 Not surprisingly given that the purportedly different standard
has been created by petitioner herself, the petition is unclear about
what she believes that minority view to be. Petitioner first claims
that this position excludes consideration “of the movant’s evi-
dence” and should consider only the “non-movant’s evidence,”
Pet. 13, 14, by which Berge presumably means that evidence
introduced by the non-movant. Later, however, this standard is
described as permitting the court to look not just at evidence
introduced by the non-movant (i.e., “the non-movant’s evidence’’),
but rather at all evidence “favoring the non-movant,” apparently
without regard to which party introduced the evidence. Pet. 15.
23 F
as Aparicio expressly noted, the issue arose where “the
defendant has not yet presented any proof.” 84 F.3d at
807. See also Smelser, 105 F.3d at 306 (reviewing trial
court’s denial of defendant’s motion for judgment “at the
close of [plaintiff's] case”). In such circumstances, it is
hardly surprising that the courts “look[] only to the plain-
tiffs evidence to make [their] determination,” for no other
evidence has been offered. These cases present no coriflict
with the usual rule applied in every circuit.
Nor do the Eighth Circuit cases on which Berge relies
present any occasion for this Court to exercise its certio-
rari jurisdiction in this case. To be sure, both of these
cases, along with several other Eighth Circuit decisions
relying on them,” do state that “[g]enerally, only evi-
dence favoring the non-moving party should be con-
sidered.” Caudill v. Farmland Indus., Inc., 919 F.2d
83, 86 (8th Cir. 1990); Dace v. ACF Indus, Inc., 722
F.2d 374, 376 (8th Cir. 1983), as supplemented on re-
hearing, 728 F.2d 976 (8th Cir. 1984) (per curiam).
Even if these cases were viewed as stating a different
(minority) view of the appropriate standard of review,
however, they do not even constitute the settled view of
the Eighth Circuit. As noted, cases from that court have
repeatedly articulated that it is appropriate to review “all
the evidence” or “the evidence” without indicating any
intent to exclude certain evidence from consideration. At
the very most, then, petitioner has identified a tension
in approaches by different panels of the Eighth Circuit.
It has long been settled that “ ‘decisions between differ-
ent panels of the same Court of Appeals will not be
considered to present a reviewable conflict, since such
differences of view are deemed an intramural matter to
be resolved by the Court of Appeals itself.’” Supreme
Court Practice at 176 (quoting Justice Harlan, Manning
19 McAnally v. Gildersleeve, 16 F.3d 1493, 1496 (8th Cir. 1994):
Kientzy v. McDonnell Douglas Corp., 990 F.2d 1051, 1056 (8th Cir.
1993); Butler v. Dowd, 979 F.2d 661, 675 (8th Cir. 1992), cert.
denied, 508 U.S. 930 (1993).
24
the Dikes, 13 Record of N.Y.C. Bar Ass’n 541, 552
(1958)). See also Wisniewski v. United States, 353 US.
901, 902 (1957) (per curiam) (“It is primarily the task
of a Court of Appeals to reconcile its internal difficulties”).
Petitioner’s reliance on Justice White’s dissent from
denial of certiorari in Schwimmer v. Sony Corp., 459
U.S. 1007 (1982), fails to recognize that “comments in
[a] dissenting opinion * * * are just that: comments in a
dissenting opinion.” United States Railroad Retirement
Bd. v. Fritz, 449 U.S. 166, 177 n.10 (1980). No other
Justice joined in that dissent, which articulated two per-
ceived conflicts in the circuits. As to the “conflict”
purportedly at issue here, Justice White believed that the
First and Third Circuits followed what the petitioner
calls the “middle ground” and attributes to the Eighth
Circuit. See 459 U.S. at 1009; Pet. 16. As petitioner
recognizes, however, even if those courts at one time
followed a “middle ground,” more recent decisions of
those circuits repeat the standard formulation used by the
other circuits. Justice White attributed to the Eighth
Circuit an approach under which “only evidence which
supports the verdict winner is to be considered.” 459
U.S. at 1009. But, as noted above, most panels of that
court now articulate the standard formulation. Any in-
tercircuit “conflict” that existed at the time of Justice
White’s 1982 dissent from denial—a conflict the other
members of the Court found tolerable or non-existent—
has only narrowed in the intervening 15 years and is now
at most an intracircuit tension. There is even less reason
to take up the issue now than there was in 1982.
4. Examination of the verbal formulations employed
by the courts, including the Eighth Circuit, would be
20 See Pet. 15 n.2 (citing Dragon Vv. Rhode Island Dep’t of Mental
Health, Retardation & Hosps., 936 F.2d 32, 36 (1st Cir. 1991)
(Breyer, J.) and Walter v. Holiday Inns, Inc., 985 F.2d 1232, 1238
(3d Cir. 1993)); Pet. 16 n.7 (citing Katz v. City Metal Co., 87
F.3d 26, 28 (1st Cir. 1996) and McDaniels v. Flick, 59 F.3d 446,
453 (3d Cir. 1995), cert. denied, 116 S. Ct. 1017 (1996)).
~~
a
25
largely an academic exercise in semantics. In all circuits,
the settled rule is that evidence is reviewed in the light
most favorable to the verdict winner, with all reasonable
inferences drawn in that party’s favor. See 9A Charles
A. Wright & Arthur R. Miller, Federal Practice and
Procedure § 2524 at 255-259 (2d ed. 1995). This
rule has been regularly applied by those panels of the
courts of appeals that employ the “all the evidence”
formulation ; they too “view all the evidence in the
light most favorable to the nonmoving party and draw
all reasonable inferences in favor of the nonmoving
party.” ** Where there is an evidentiary dispute, there-
fore, the courts are in full agreement that the applicable
standard of review requires them to credit the evidence
favoring the non-movant. Thus, in these circumstances,
the appropriate and universal standard of review com-
mands that—in the words of the Eighth Circuit—“only
evidence favoring the non-moving party should be con-
sidered.” Caudill, 919 F.2d at 86. There is, in short,
little other than a linguistic distinction between the
courts that consider all the evidence but rely only on that
which favors the non-moving party and the Eighth Cir-
cuit’s occasional articulation that only the evidence favor-
ing the non-moving party should be considered.”
21 Harris v. Chapman, 97 F.3d 499, 505 (11th Cir. 1996), cert.
denied, 117 S. Ct. 2422 (1997). See also Central Office Tel., Inc.
Vv. AT&T, 108 F.3d 981, 992 (9th Cir. 1997); Mattern v. Eastman
Kodak Co., 104 F.3d 702, 705 (5th Cir. 1997), pet. for cert. filed,
66 U.S.L.W. 3108 (U.S. July 21, 1997) (No. 97-126) ; Lester v. RTC,
994 F.2d 1247, 1253 (7th Cir. 1993); Walter v. Holiday Inns, Inc.,
985 F.2d at 1238.
22The only circumstance in which the purported distinction
might be thought to be relevant is where uncontradicted evidence
favors the moving party. But, as petitioner notes, even those panels
of the Eighth Circuit on which petitioner relies recognize that
uncontradicted evidence favoring the movant may be considered.
See Pet. 16 (citing Caudill, 919 F.2d at 86, and Dace, 722 F.2d at
377 n.6). Thus, even as to this narrow range of evidence, the Eighth
Circuit’s own internal differences in articulation of the standard
do not affect the actual substance of review.
26
In her search for a conflict, petitioner has seized on the
fact that the settled standards for reviewing sufficiency
of the evidence have “been the subject of a great variety
of verbal formulations.” Wright & Miller, supra, § 2524
at 261. In the real world, however, the variety of verbal
formulations makes little if any difference in the outcome
of cases because all courts effectively review the same
evidence in determining whether a motion for judgment
as a matter of law should have been granted. There is
no warrant for this Court to grant the petition so that it
can impose a verbal straightjacket on the opinions of the
courts of appeals, and there is even less reason to review
the Fourth Circuit’s conclusion on the sufficiency of the
evidence in this particular case.
Ill. THE COURT OF APPEALS APPLIED SETTLED
LAW TO THE FACTS OF THIS CASE IN DETER-
MINING THAT PETITIONER’S STATE-LAW CON-
VERSION COUNT WAS PREEMPTED
Berge’s state-law conversion claim is based on allega-
tions that respondents “included Dr. Fowler’s plagiarized
abstract in the Year 14 progress report” and that Dr. Pass
and Dr. Fowler “published their 1991 article in the Jour-
nal of Infectious Diseases,” Pet. 24, an article which she
claims “pervasively used” her work. Brief of Appellee
49-50. In considering this claim, the Fourth Circuit ac-
cepted for purposes of argument Berge’s disputed conten-
tion that “ideas and information” are subject to conversion
under Alabama law. Applying settled federal preemption
analysis, the court held that “[{t]here can be no doubt that
Berge’s work—her dissertation, to which she herself affixed
a copyright mark; her abstracts: her drafts, etc.—falls
within the scope of the subject matter of copyright.” Pet.
App. 19a. Although “ideas and methods” are excluded
from copyright protection, the court noted. “the shadow
actually cast by the Act’s preemption is notably broader
than the wing of its protection.’ Jd.
Ticicinesesciineiiauiiiaaiiiaiiaial
27
The court then considered whether Alabama conver-
sion law contained “an ‘extra element’ that changes the
nature of the state law action so that it is ‘qualitatively
different from a copyright infringement claim.’” Id. (quot-
ing Rosciszewski v. Arete Assocs., Inc., 1 F.3d 225, 229
(4th Cir. 1993) (emphasis in Rosciszewski). Thus, the
court recognized, a state law action for conversion is not
preempted if it involves proof that the defendant “unlaw-
fully retained the physical object embodying plaintiff's
work,” but is preempted if the plaintiff alleges only “un-
lawful retention of its intellectual property rights and
not * * * of the tangible object embodying its work.”
Pet. App. 19a-20a (internal quotation marks and citations
omitted). Under this “hornbook law,” Pet. App. 19a, the
Fourth Circuit held, “[i]t could hardly be clearer that
Berge’s conversion claim is preempted.” /d. at 20a. The
court found it “crucial” that petitioner made “no claim
that appellants converted any tangible objects embodying
her intellectual property.” Jd. Thus, the court held, her
“charge of plagiarism and lack of attribution * * * are
tantamount to * * * a claim of copyright infringement,
for Berge has certainly not been prevented from using
her own ideas and methods.” 7d. at 22a.
Petitioner cites no court that rejects the Fourth Cir-
cuit’s mode of analysis; she does not and cannot dispute
that the courts of appeals have unanimously adopted the
“extra element” test for determining whether a state law
seeks to protect “legal or equitable rights that are equiva-
lent to any of the exclusive rights within the general scope
of copyright as specified in section 106.” 17 U.S.C.
§$ 301(a).~ Rather, petitioner argues that the Fourth Cir-
cuit erred in its application of that test to the facts of this
*3See National Basketball Ass’n v. Motorola, Inc., 105 F.3d 841,
856 (2d Cir. 1997) (“certain forms of commercial misappropriation
otherwise within the general scope requirement will survive pre-
emption if an ‘extra-element’ test is met”): Harolds Stores, Inc.
v. Dillard Dept. Stores, Inc., 82 F.3d 1533, 1543 (10th Cir.), cert.
28
case. See Pet. 24 (Court should resolve purported dispute
“over how to apply the explicit preemption provisions of
the Copyright Act to state law claims of conversion of
intellectual property”). As noted, however, “[a] petition
for a writ of certiorari is rarely granted when the asserted
error consists of * * * the misapplication of a properly
stated rule of law.” Sup. Ct. R. 10. There is no compel-
ling reason to review the Fourth Circuit’s application of
settled law to Berge’s claim.
Petitioner attempts to identify a “conflict” by citing
G.S. Rasmussen & Assocs. V. Kalitta Flying Serv., Inc.,
958 F.2d 896 (9th Cir. 1992), cert. denied, 508 U.S. 959
(1993). While petitioner would find in that case adop-
tion of a different “approach,” Pet. 24, the Ninth Circuit’s
opinion evidences nothing more than application of the
settled test to the particular facts of the case before it.
The Kalitta court, quoting earlier Ninth Circuit authority,
recognized that section 301(a) “preempts a state-created
right if that right may be abridged by an act which, in
and of itself, would infringe one of the exclusive rights
listed in § 106. But if violation of the state right is predi-
cated upon an act incorporating elements beyond mere
reproduction or the like, there is no preemption.” Jd. at
denied, 117 S. Ct. 297 (1996) (same); Bateman v. Mnemonics, Inc.,
79 F.3d 1532, 1549 (11th Cir. 1996) (applying “the ‘extra element’
test generally employed by courts in performing copyright preemp-
tion analysis”) ; Daboub v. Gibbons, 42 F.3d 285, 289-290 (5th Cir.
1995) (state law preempted where it does not require proof of extra
element) ; Data Gen. Corp. v. Grumman Sys. Support Corp., 36 F.3d
1147, 1157 (1st Cir. 1994); Anderson v. Nidorf, 26 F.3d 100, 102-
103 (9th Cir. 1994), cert. denied, 514 U.S. 1035 (1995); Kregos v.
Associated Press, 3 F.3d 656, 665-666 (2d Cir. 1993) (state law
preempted where it does not require proof of extra element), cert.
denied, 510 U.S. 1112 (1994); Rosciszewski, 1 F.3d at 229-230
(same); National Car Rental Sys., Inc. v. Computer Assocs. Int'l,
Inc., 991 F.2d 426, 431 (8th Cir.), cert. denied, 510 U.S. 861 (1993).
See also 1 Melville B. Nimmer & David Nimmer, Nimmer on Copy-
right §1.01[B][1], at 1-15 to 1-16 (1997); III Paul Goldstein,
Copyright, § 15.2.1.2, at 15:10 to 15:14 (2d ed. 1996).
29
904 (quoting Oddo v. Ries, 743 F.2d 630, 635 (9th Cir.
1984) (internal quotations, bracket and citations omitted)).
That, of course, is the extra element test applied by the
Fourth Circuit below. The Ninth Circuit then applied
that settled test to the particular facts before it—involving
use of an unauthorized copy of a certificate issued by the
FAA—and held that the state law claim there at issue
was not preempted.
The Fourth Circuit did not reject Kalitta, but instead
recognized and applied the Fifth Circuit’s distinction of the
facts of that case in Daboub v. Gibbons, supra. See Pet.
App. 21a-22a. The Daboub court observed that the plain-
tiff in Kalitta “was not simply complaining about the im-
proper copying of the copyrighted material.” 42 F.3d at
289. In the case before it, by contrast, the Fifth Circuit
held that state law claims were preempted because “[t]he
core of each of these state law theories of recovery * * *
[is] the wrongful copying, distribution, and performance of
the lyrics” of the song at issue. Jd. So too here: “Berge’s
charge of plagiarism and lack of attribution can only
amount to, indeed, are tantamount to, a claim of copy-
right infringement, for Berge has not been prevented from
using her own ideas and methods.” Pet. App. 22a.
The Ninth Circuit both before and since Kalitta has
affirmed that it too follows the generally accepted test.
See Anderson v. Nidorf, 26 F.3d at 102; Oddo v. Ries,
743 F.2d at 635. To the extent that Kalitta is perceived
to employ a less preemptive application of that test, its
effect is, to date, limited to that case alone; no other court
has applied Kalitta so that state law conversion claims
survive where the gravamen of those claims is wrongful
copying or distribution.* And, if it is so understood,
24 See, e.g., Daboub, 42 F.3d at 289-290: Taquino v. Teledyne
Monarch Rubber, 893 F.2d 1488, 1501 (5th Cir. 1990): Harper &
Row Publishers, Inc. v. Nation Enters., 723 F.2d 195, 201 (2d Cir.
1983), rev’d on other grounds, 471 U.S. 539 (1985).
30
Kalitta has been rejected by the commentators.* Thus,
at most, petitioner has identified a possible tension be-
tween the decision below, which follows the general ap-
proach, and a single, arguably incorrect decision of the
Ninth Circuit. This tension—if it exists at all—is surely
tolerable unless and until the perceived conflict is expanded
and developed.
CONCLUSION
For all the foregoing reasons, the petition should be
denied.
Respectfully submitted,
DAVID G. LEITCH *
WILLIAM A. BRADFORD, JR.
BARBARA F’. MISHKIN
HoGAN & HARTSON L.L.P.
555 Thirteenth Street, N.W.
Washington, D.C. 20004
(202) 637-5822
* Counsel of Record Counsel for Respondents
25 See 1 Nimmer on Copyright §1.01[B][1][i] at 1-38 (“If
* * * contrary to the usual view of conversion, it is regarded as
encompassing unauthorized reproductions, then the rights created
are indeed ‘equivalent’ to copyright, and the state law is pre-
empted. For this reason, it may be questioned whether [ Kalitta]
ruled correctly that defendant’s use of intangibles constituted con-
version under state law, immune from copyright protection’) ; see
also id. at 1-38 to 1-39 n.181.3.
This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.