Amicus Curiae Brief — Ferring B.V. v. Meijer, Inc.

MOTION FILED

(“2

APR 2 g 2010 ANo. 09-1175

IN THE

Supreme Court of the United States

-_ -?

FERRINGB.V, FERRING PHARMACEUTICALS, INC.,

and AVENTIS PHARMACEUTICALS, INC.,

Petitioners,

v,

MirIJMER, INC., MEIJER DISTRIBUTION, INC.,

ROCHESTER DRUG CO-OPERATIVE, INC., and

LOUISIANA WHOLESALE DRUGCO., INC.,

Respondents

On PETITION FOR A Writ OF CERTIORARI TO THE

UNrrep STares Court OF APPEALS FOR THE SECOND CIRCUIT

MLOTION FOR LEAVE T0 FILE AMICUS CURIAE BRIEF AND

BRIEF OF INTELLECTUAL PROPERTY OWNERS ASSOCIATION

AS AMICUS CURIAE IN SUPPORT OF PETITIONERS

JoUN L. Nort DouGLAS NoRMAN, President

Prerer G. Pappas KEVIN H. RHODEs, Charr,

JOSHUA D. CURRY Amicus Brief Committee

SUTHERLAND ASBILL HERBERT C, WAMSLEY™*,

& BRENNAN LLP Hrecutive Director

999 Peachtree Street N.E. INTELLECTUAL PROPERTY

Atlanta, GA 30309 OwNERS ASSOCIATION

(404) 853-8000 1501 M Street, NW

Suite 1150

Washington, DC 20005

(202) 507-4500

* Counsel of Record herb@ipo.org

Counsel for Amicus Curiae

Intellectual Property Owners Association

MOTION FOR LEAVE TO FILE

AMICUS CURIAE BRIEF

Intellectual Property Owners Association (“IPO”)

moves for leave to file a brief as amicus curiae

supporting petitioners Ferring B.V. et al.

Amicus curiae IPO is a trade association

representing companies and individuals in all industries

and fields of technology who own or are interested in

U.S. intellectual property rights. [PO’s membership

includes more than 200 companies and a total of nearly

11,000 individuals who are involved in the association

either through their companies or as inventor, author,

executive, law firm, or attorney members. Founded in

1972, IPO represents the interests of all owners of

intellectual property. IPO regularly represents the

interests of its members before Congress and the PTO

and has filed amicus curiae briefs in this Court and

other courts on significant issues of intellectual property

law. The members of IPO’s Board of Directors must

approve the filing of a brief by a three-fourths majority.

IPO believes that it can provide the court with

perspectives that may not be provided by the parties or

other amzicit. IPO’s Board of Directors includes chief

patent counsel for companies in all major industries. The

proposed IPO brief has been approved by chief patent

counsel from diverse industries including computers,

software, chemicals and pharmaceuticals.

The proposed IPO brief addresses the question of

whether the Second Circuit’s new jurisdictional

standard is inconsistent with this Court’s decision in

Christianson v. Colt Industries Operating Corp., 486

U.S. 800 (1988), and in conflict with decisions of the

Federal Circuit and Seventh Circuit. In finding that it,

not the Federal Circuit, had jurisdiction over the patent-

related Sherman Act claims asserted by Plaintiffs,

including Walker Process claims, simply because a non-

patent-related Sherman Act claim also was included in

the same count, the Second Circuit disregarded

Congress’s intent in creating the Federal Circuit as well

as this Court’s decision in Christianson which

supported the Federal Circuit’s jurisdiction over patent

issues.

[PO believes that its brief could be helpful to the

Court. [PO therefore requests that the Court grant this

motion for leave to file in support of petitioners Ferring

B.V., et al.

Consent to file this brief was requested of both

parties in writing on April 7, 2010. Ferring B.V,, et al.

has granted consent. However Meijer, Inc. et al. has not.

Respectfully submitted,

DoucLas Norman, President

Kevin H. RuHopes, Chair,

Amicus Brief Committee

HERBERT C. WAMSLEY”*,

Haecutzve Director

INTELLECTUAL PROPERTY

OwNnERS ASSOCIATION

1501 M Street, NW

Suite 1150

Washington, DC 20005

(202) 507-4500

herb@ipo.org

JOHN L. NORTH

PETER G. PAPPAS

JOSHUA D. CuRRY

SUTHERLAND ASBILL

& BRENNAN LLP

999 Peachtree Street N.E.

Atlanta, GA 30309

(404) 853-8000

Counsel for Amicus Curiae

Intellectual Property Oumers Association

* Counsel of Record

QUESTION PRESENTED

Amicus curiae Intellectual Property Owners

Association addresses the following issue only:

Whether the Second Circuit’s new jurisdictional

standard is inconsistent with this Court’s decision in

Christianson v. Colt Industries Operating Corp., 486

U.S. 800 (1988), which held that the Federal Circuit has

exclusive jurisdiction in any patent-based case in which

patent issues must be resolved in order for plaintiffs to

achieve the overall success of their claim and obtain all

the damages (or other relief) they seek, and in conflict

with the decisions of the Federal Circuit and Seventh

Circuit, which have followed this Court’s Christianson

standard.

il

TABLE OF CONTENTS

QUESTION PRESENTED

TABLE OF CONTENTS

TABLE OF CITED AUTHORITIES

INTEREST OF AMICUS CURIAE

SUMMARY OF THE REASONS FOR

GRANTING THE PETITION

REASONS FOR GRANTING THE PETITION

THE SECOND CIRCUIT'S DECISION IS

INCONSISTENT WITH CHRISTIANSON

AND IN CONFLICT WITH DECISIONS

OF THE FEDERAL CIRCUIT AND

SEVENTH CIRCUIT.

A. Under Christianson, Appellate

Jurisdiction Was Fixed In The

Federal Circuit Based On Plaintiffs’

Complaint

1. Plaintiffs’ Well-Pleaded Complaint

Includes At Least Four Different

Claims; Three Of Which “Depend

On Resolution Of A Substantial

Question Of Patent Law.”

B.

(a)

(b)

(ec)

iil

Contents

The Distinction Between

The Citizen’s Petition And

Patent-Related Claims Is

Demonstrated By The Relief

Associated With Each. .....

The Alleged Sherman Act

Violations Stand As

Independent Claims, Not

we ds ve genes

The Motion To Dismiss

Standard Exemplifies Why

Plaintiffs Have Four Separate

eer nk ey an ene

There Were No Patent-Related

Claims In Christianson; This

Case Is Different. ............-

Conflicting Circuit Court Case Law

Also Shows That A Patcent-Related

Claim Gives The Federal Circuit

Exclusive Appellate Jurisdiction. ...

Page

~]

1]

1Z

13

Contents

. THE SECOND CIRCUIT’S DECISION

ERODES THE FEDERAL CIRCUIT'S

APPELLATE JURISDICTION IN

CONTRAVENTION OF CONGRESS'S

GOAL OF CREATING UNIFORMITY

obey vb og gh > See wern et cree

A. Congress Created The Federal

Circuit To Harmonize The National

Patent Laws And Eliminate Forum

NS ig educa bn ka ee ee

Vesting Jurisdiction For Patent-

Related Antitrust Appeals In The

Federal Circuit Serves Congress’s

Purpose Of Creating Uniformity In

Patent Law.

. THE SECOND CIRCUIT'S DECISION

WILL ALLOW A CLEVER PLAINTIFF

TO PLEAD ITS PATENT-RELATED

ANTITRUST CLAIMS [INTO THE

REGIONAL CIRCUIT AND AVOID

ARAES © RRC ERs CORIO EDs ce ckcse tances

CONCLUSION

APPENDIX

TABLE OF AUTHORITIES

CASES

Amgen, Inc. v. FE: Hoffmann-La Roche Ltd.,

480 F. Supp. 2d 462 (D. Mass. 2007)

In re Buspirone Patent & Antitrust Litigation,

185 F. Supp. 2d 363 (S.D.N.Y. 2002) .........

Christianson v. Colt Industries

Operating Corp.,

822 F.2d 1544 (Fed. Cir. 1987)

Christianson v. Colt Industries

Operating Corp.,

A&86 U.S. 800 (1988)

Ciprofloxacin Hydrochloride Antitrust

Litigation,

544 F.3d 1323 (Fed. Cir. 2008)

City of Chicago v. International College

of Surgeons,

522 U.S. 156 (1997)

ClearPlay, Inc. v. Nissim,

No. 09-1471, slip op. (Fed. Cir. Apr. 21, 2010)

Federal Department Stores, Inc. v. Mortie,

452 U.S. 394 (1981) 19, 20

Authorities

Page

Franchise Tax Board of California v.

Construction Laborers Vacation Trust,

463 U.S. 1 (1983)

Graham v. John Deere Co.,

383 U.S. 1 (1966)

Holmes Group, Inc. v. Vornado Air

Circulation System, Inc.,

535 U.S. 826 (2002)

Kaiser Foundation Health Plan Inc. v.

Abbott Laboratories, Inc.,

552 F.3d 1033 (9th Cir. 2009)

Markman v. Westview Instruments, Inc.,

52 F.3d 967 (Fed.Cir.1995), aff'd,

517 U.S. 370 (1996)

Manufacturing Resource Corp. v.

Graybar Electric Co., Inc.,

679 F.2d 1355 (11th Cir. 1982)

Nobelpharma AB v. Implant Innovations, Inc.,

141 F.3d 1059 (Fed. Cir. 1998)

Novo Nordisk of North America, Ince. v.

Genentech, Inc.,

885 F. Supp. 522 (S.D.N.Y. 1995)

Authorities

Primetime 24 Joint Venture v.

National Broadcasting Co., Inc.,

219 F.3d 92 (2d Cir. 2000)

Professional Real Estate Investors, Inc. v.

Columbia Pictures Industrial, Inc.,

508 U.S. 49 (1998)

Seiko Epson Corp. v. Glory South Software

Manufacturing, Inc.,

No. 06-477, 2010 WL 256505 (D. Or. Jan. 19,

2010)

In re Spalding Sports Worldwide, Inc.,

203 F.3d 800 (Fed. Cir. 2000)

U.S. Valves, Inc. v. Dray,

190 F.3d 811 (7th Cir. 1999) ............. 5,10

Walker Process Equipment, Inc. v.

Food Machine & Chemical Corp.,

382 U.S. 172 (1965) passim

STATUTES

, ld

vill

Authorities

RULES

. Civ. P 12(b) ..

. Civ. BP 12(b)(6)

MISCELLANEOUS

A.J. Gajarsa & L.P Cogswell, III, The Federal

Circurt and the Supreme Court,

55 Am. U. L. Rev. 821 (2006)

H.T. Markey, The Federal Circuit and

Congressional Intent,

41 Am. U. L. Rev. 577 (1992)

H. Rep. No. 97-312 (1981)

Pub. L. No. 97-164, 96 Stat. 25 (1982)

». Rep. No. 97-275 (1981), as reprinted on 1YS2

U.S.C.C.A.N. 1]

INTEREST OF AMICUS CURIAE

Amicus curiae Intellectual Property Owner:

Association (“IPO”)' is a trade association representing

companies and individuals in all industries and fields of

technology who own or are interested in U.S. intellectual

property rights. I[PO’s membership includes more than

200 companies and more than 11,000 individuals who

are involved in the association either through their

companies or as inventor, author, executive, law firm, or

attorney members. Founded in 1972, 1PO represents the

interests of all owners of intellectual property. IPO

members receive about thirty percent of the patents

issued by the U.S. Patent and Trademark Office (“PTO”)

to U.S. nationals. IPO regularly represents the

interests of its members before Congress and the PTO

and has filed amicus curiae briefs in this Court and

other courts on significant issues of intellectual property

law. The members of IPO’s Board of Directors, which

approved the filing of this brief, are listed in the

Appendix.®

l. Amicus curiae gave appropriate notice to both partie

and requested consent to file this brief. Consent was granted

from the Petitioners, but not from the Respondents. A motion

for leave to file a brief amicus cumas attached. No counse!

for a party authored this brief in whole or in part, and no sucl

counsel or party made a monetary contribution intended to fund

the preparation or submission of this brief. No person other

than the amicus curiae, or its counsel made a monetary

contribution to its preparation or submission

IPO procedures require approval of po

by a three-fourth majority of directors presen

SUMMARY OF THE REASONS FOR

GRANTING THE PETITION

Congress conferred “exclusive jurisdiction” in the

U.S. Court of Appeals for the Federal Circuit over all

appeals based “in whole or in part” on patent claims.

28 U.S.C. § 1295(a)(1) (2006). The federal courts

consistently have interpreted this mandate to vest the

Kederal Circuit with exclusive appellate jurisdiction

over patent-based antitrust claims, including claims

based on the Court’s Walker Process decision.®

This consistent line of authority fulfills both the

language of the Federal Circuit’s enabling act* and the

intent of Congress in creating the Federal Circuit.

Congress created the Federal] Circuit as an intermediate

appellate court to bring uniformity to judicial

interpretation of the Patent Act. While not every matter

involving a patent must be heard by the Federal Circuit,

Congress struck the balance heavily in favor of cases

reaching the Federal Circuit when they involve patent

issues.

3. A Walker Process claim is a type of Sherman Act Section

2 claim based, znter alia, on proof that a patentee “obtained [a]

patent by knowingly and willfully misrepresenting facts to the”

PTO thus forfeiting the right to exclude conveyed by the patent

grant. Walker Process Equip., Inc. v. Food Mach, & Chem. Cor

$82 U.S. 172, 175-77 (1965)

1. ‘he Federal Circuit was created by the Federal Court:

Improvement Act of 1982. Pub. L. No. 97-164, 96 Stat. 25 (1982)

Since its creation in 1982, the Federal Circuit has

served this purpose by resolving or aiding resolution of

a number of patent issues that had been interpreted

differently among and between the regional circuits and

the PTO, including the scope of attorney-client privilege

over patent prosecution matters and how patent claims

should be construed. This increase in patent law

uniformity has allowed prospective intellectual property

owners to develop and protect useful inventions based

on a relatively settled and consistent set of legal

standards. Patent holders’ prior uncertainty due to the

fact that their patents could be judged by any one of a

differing set of regional circuit standards largely has

been eliminated.

The decision of the Second Circuit below is contrary

to Congress’s grant of jurisdiction to the Federal Circuit

and conflicts with nearly three decades of authority

interpreting that grant. The Second Circuit found that

it, not the Federal Circuit, had jurisdiction over the

patent-related Sherman Act claims asserted by

Plaintiffs, including a Walker Process claim, simply

because a non-patent-related Sherman Act claim also

was included in the same count. Pet. App. 15a-16a.°

The Second Circuit reached this conclusion as a result

of misapprehending Plaintiffs’ patent-related claims to

relief to be “theories” of anomnibus Sherman Act claim.

In so doing, the Second Circuit misconstrued this

Court’s decision in Christianson v, Colt Industries

Operating Corp., 486 U.S. 800, 811 (1988). Pet. App.

L5a—lba.

in below | reprinted at Pot

The Second Circuit’s decision in no way follows from

this Court’s decision in Christianson. Indeed, the

Second Circuit turned on its head this Court’s ruling

that the Federal Circuit should have jurisdiction if any

element of one of a plaintiff’s claims “necessarily

depends on resolution of a substantial question of

federal patent law... .” Christianson, 486 U.S. at 808-

09. And, in so doing, the Second Circuit wrested from

Congress and the courts the question of which appeals

court will hear patent-related antitrust claims and put

it entirely in the hands of litigants. Under the Second

Circuit’s rule, if the antitrust plaintiff wishes the Federal

Circuit to hear its appeal, it will separate Walker Process

and other patent-related claims from its other counts.

If the antitrust plaintiff wishes a regional circuit court

to hear its appeal, it will bundle its Walker Process claim

in a single count with non-patent-related antitrust

claims and characterize them as different “theories” to

the same relief. This result will undermine Congress’s

intention of creating national uniformity in the patent

laws and the handling of patent-related antitrust claims

and other claims that are based in part on the patent

laws.

The Second Circuit’s decision not only is contrary

to the intent of Congress as expressed in the Federal

Cireuit’s enabling act and this Cour*’s decision in

Christianson, it also creates a conflict among the circ ait

courts. The Federal Circuit has held that it has exclusive

appellate jurisdiction over a plaintiff’s Walker Process

claim “because the determination of fraud before the

PTO necessarily involves a substantial question of

patent law.” Ciprofloxacin Hydrochloride Antitrust

Litiyg., 544 F3d 1323, 1329, 1330 n.8 (Fed. Cir. 2008).

5

Similarly, where resolution of a plaintiff’s breach of

contract claim required the court to make a patent

infringement determination, the Seventh Circuit found

that the Federal Circuit had exclusive appellate

jurisdiction. U.S. Valves, Inc. v. Dray, 190 F:3d 811, 813-

15 (7th Cir. 1999).

In all, the decision below is at odds with statutory

authority, the precedent of this Court, and in conflict

with the rulings other circuit courts. Amicus curiae IPO,

therefore, respectfully requests that the Court grant

certiorarz.

REASONS FOR GRANTING THE PETITION

I. THE SECOND CIRCUIT’S DECISION IS

INCONSISTENT WITH CHRISTIANSON AND

IN CONFLICT WITH DECISIONS OF THE

FEDERAL CIRCUIT AND SEVENTH CIRCUIT.

A. Under Christianson, Appellate Jurisdiction

Was Fixed In The Federal Circuit Based On

Plaintiffs’ Complaint.

A proper application of Christianson would fix

exclusive appellate jurisdiction in the Federal Circuit

because Plaintiffs’ complaint included no less than three

patent-related antitrust claims.

In Christianson, this Court explained the two-part

test that applies to determining the Federal Circuit's

appellate jurisdiction. First, the court applies the “well-

pleaded complaint” rule to determine which of the

plaintiff’s claims possibly can confer “arising under”

6

patent jurisdiction. 486 U.S. at 807-08.° Second, the

court analyzes the well-pleaded claims to see if any fall

in two categories belonging exclusively to the Federal

Circuit. /d. at 808-09. Category I claims encompass those

in which federal patent law creates the cause of action

(e.g., patent infringement claims). /d. Category II claims

encompass those in which “plaintiff’s right to relief

necessarily depends on resolution of a substantial

question of federal patent law, in that patent law is a

necessary element of one of the well-pleaded claims.”

sd.

Significantly, only one element of a well-pleaded

claim needs to “depend on resolution of a substantial

question of patent law” for the entire well-pleaded claim

to arise under the patent laws. /d.; see also F'ranchise

Tax, 463 U.S. at 8 n.8 (although enabling statutes are

often significantly narrower, federal question

jurisdiction can extend to any case where a latent federal

“ingredient” might he dispositive of the outcome of the

case).

[W Jhether a case is one arising under [federal

law], in the sense of the jurisdictional statute,

.. must be determined from what necessarily

appears in the plaintiff’s statement of his own

claim in the bill or declaration, unaided by

anything alleged in anticipation of avoidance

of defenses which it is thought the defendant

may interpose.

Franchise Tax Bd. of Cal. v. Constr. Laborers Vacation Trust,

463 U.S. 1, 10 (1983); see also Holmes Group, Inc. v. Vornado Air

Circulation Sys., Inc., 535 U.S. 826, 830-32 (2002) (determining

the same in the context of patent law cases).

7

1. Plaintiffs’ Well-Pleaded Complaint

Includes At Least Four Different Claims;

Three Of Which “Depend On Resolution

Of A Substantial Question Of Patent Law.”

(a) The Distinction Between The

Citizen’s Petition And Patent-Related

Claims Is Demonstrated By The Relief

Associated With Each.

Plaintiffs’ single-count class action complaint alleges

at least four distinct claims to relief, including that

Defendants:

(1) violated Section 2 of the Sherman Act by

procuring U.S. Patent No. 5,047,398 (the “ ‘398 patent”),

relating to a pharmaceutical product called desmopressin

acetate, by fraud under Walker Process by knowingly

and willingly misrepresenting facts to the PTO, Pet. App.

77a—S4a (1% 50-74);

(2) violated Section 2 by improperly listing the ‘398

patent in the U.S. Food and Drug Administration

(“FDA”) publication known as the Orange Book, Pet.

App. 84a—-87a (741 75-85);

(3) violated Section 2 by filing and prosecuting a

baseless sham patent infringement litigation against

generic drug manufacturers to delay FDA approval of

competing generic tablets from 2002 to february 2005,

Pet. App. 87a-9la (111 86-98); and,

8

(4) violated Section 2 by filing an unfounded citizen’s

petition with FDA in February 2004 to delay further final

FDA approval of generic competition, Pet. App. 91a—100a

(17 99-125).

Plaintiffs listed each one of these instances of conduct

under the heading “violations,” separately referred to

each instance of conduct using subparagraphs a-—d in

paragraph 144 of their complaint, and alleged that they

were injured by “Defendants’ antitrust vzolations.” Pet.

App. 104a—-07a (19 144, 147) (alleging four Section 2

violations based on the foregoing conduct) (emphasis

added).

Further, in their prayer for relief, Plaintiffs requested

the court find that “Defendants’ actions” violated

Section 2 and award them damages for the overcharges

they sustained. Pet. App. 107a, 108a (prayer (ii) & (iii))

(emphasis added). Plaintiffs characterized their injury as

paying more for desmopressin acetate tablets than they

would have absent Defendants’ antitrust “vzolations.”

Pet. App. 107a (1 147) (emphasis added). Plaintiffs’ injury

allegedly began in February 2001—three years before

Defendants submitted the citizen’s petition to FDA—ana

continued until at least July 2005 when the first generic

competitor entered the desmopressin acetate tablet

market. Pet. App. 103a, 63a, 100a, 102a (111 134, 15, 122,

131-133).

Under the Court’s decision in Christianson, each

distinct instance of wrongful conduct alleged in Plaintiffs’

complaint below constitutes an independent claim to relief

because, if proved, each would entitle Plaintiffs to different

relief. As this Court explained: if a plaintiff only may

9

recover the “relief it seeks” for reasons that “depen[d] on

resolution of a substantial question of federal patent law,”

the claim arises under the patent laws. Christianson, 486

U.S. at 809-10; see also City of Chicago v. Intl Coll. of

Surgeons, 522 U.S. 156, 164 (1997) (a case arises under

federal law for purposes of federal-question jurisdiction if

the plaintiff’s “right to relief necessarily depends on

resolution of a substantial question of federal law”).

Depending on which well-pleaded claims Plaintiffs prevail,

they will obtain different relief. For example, if Plaintiffs’

patent-related antitrust claims fail but their citizen’s

petition claim succeeds, Plaintiffs’ relief will be limited to

damages for the injury period beginning in 2004 when

Defendants filed the sham citizen’s petition and will not

reach back to 2001 when the class period begins. Pet. App.

63a, 98a—94a, 100a, 108a (11 15, 105, 121-22, 134). If,

however, Plaintiffs succeed on their Walker Process claim,

they would be entitled to damages for the injury period

starting in 2001 at the beginning of the class period. Pet.

App. 63a, 100a, 103a (197 15, 121-22, 134)."

Each of the Walker Process, Orange Book, and sham

litigation claims in the present case necessarily “depend[s]

on resolution of a substantial question of patent law.’’®

7. These potential results are each based on the actual claims

in Plaintiffs’ well-pleaded complaint, not on an unpleaded claim

that could have been adjudicated at trial. Cf /lolmes, 535 U.S. at

832 n.3 (explaining that “the Federal Circuit’s jurisdiction, like

that of the district court, ‘is determined by reference to the

well-pleaded complaint, not the well-tried case.’” (quoting

Christianson, 486 U.S. at 814)).

8. Of course, Plaintiffs as “the master of the complaint”

could have chosen to “esche[w] claims based on federal [patent]

law ...,to have the cause heard in” the regional circuit on appeal.

See Holmes, 535 U.S. at 831 (quotations and citations omitted).

10

This is not disputed. Pet. App. 10a—lla (Second Circuit

decision below concluding that all three of these claims

“turn on substantial questions of patent law”).

Accordingly, any one of these claims alone should have

been sufficient to vest jurisdiction in the Federal Circuit.

See Christianson, 486 U.S. at 807-09. The Second

Circuit, however, improperly characterized these claims

to relief as “theories” under a Section 2 Sherman Act

claim and therefore wrongly concluded that it had

appellate jurisdiction. Pet. App. 10a—lla, 15a—16a.

Indeed, the Federal Circuit, applying Christianson,

recently validated this approach in a decision finding

regional circuit jurisdiction where plaintiff could obtain

all of the relief it sought under six state-law claims

without the resolution of any patent issues. ClearPlay,

Inc. v. Nissim, No. 09-1471, slip op. at 10-11 (Fed. Cir.

Apr. 21, 2010). ClearPlay involved breach of contract,

tortious interference, and unfair competition claims

arising, znter alia, out of a failed license agreement that

had settled earlier patent infringement litigation.

Id. at 7-8. Unlike U.S. Valves, a breach of contract case

that required a determination of whether certain

products were within the scope of a patent, U.S. Valves,

190 F.3d at 813-15, the breach of contract claims in

ClearPlay included claims for breach of provisions that

did not required any patent-based determination,

ClearPlay, No. 09-1471, slip op. at 8-10. Plaintiff

ClearPlay’s other state law claims also did not require

resolution of any patent issue. /d. Accordingly, the

Federal Circuit—looking to each claim to determine if

it required resolution of a patent issue—correctly found

it had no jurisdiction over the appeal. Jd. at 10-11. This

is precisely the analytical approach that the Second

Circuit should have followed below.

1]

(b) The Alleged Sherman Act Violations

Stand As Independent Claims, Not

“Theories.”

Plaintiffs’ Walker Process, Orange Book, sham

litigation, and sham citizen’s petition claims should not

be aggregated to determine whether there is a single,

composite violation of Section 2 of the Sherman Act.

Rather, each one of the four instances of wrongful

conduct alleged in Plaintiffs’ complaint establishes a

separate violation of Section 2, and thus a separate claim

to relief. See, e.g., Nobelpharma AB v. Implant

Innovations, Inec., 141 F.8d 1059, 1069-70 (Fed. Cir.

1998) (Walker Process claim elements); /n re Busptrone

Patent & Antitrust Litig., 185 F. Supp. 2d 368, 370-738

(S.D.N.Y. 2002) (Orange Book claim elements);

Professional Real Estate Investors, Inc. v. Columbia

Pictures Indus., Ine., 508 U.S. 49, 60-61 (1993) (“PRE”)

(sham litigation or PRE claim elements); Primetime 24

Joint Venture v. Nat'l Broadcasting Co., Inc., 219 F.3d

92, 100-01 (2d Cir. 2000) (sham citizen’s petition claim

elements).

Plaintiffs’ citizen’s petition claim is logically and

factually distinct from their patent-based Section 2

claims. The citizen’s petition claim is founded on

Defendants’ alleged attempt to persuade the FDA to

withhold regulatory approval for generic competition

through a sham regulatory petition. Pet. App. 92a-100a

(741 99-125). The citizen’s petition urged the FDA to

require more testing before determining that the

generic products were bioequivalent to Defendants’

reference listed drug product. Pet. App. 94a (41 106).

Defendants submitted the petition in 2004, well after

12

the ‘398 patent had been obtained, listed in the Orange

Book, and asserted against Defendants’ generic

competitors. Pet. App. 93a—94a (1 105). Had no patent

on desmopressin acetate ever been granted, Defendants

still could have attempted to persuade the FDA to

withhold approval of the generic products on the basis

of inadequate bioequivalence testing. In contrast,

Plaintiffs’ other three claims all are based on allegations

that Defendants took unlawful actions with respect to

the ‘398 patent—fraudulently obtaining it at the PTO

and then wielding the patent monopoly against generic

competitors. See Pet. App. 77a—-9la (1 50-98). These

are separate claims, based on separate acts, taken at

separate times.

(c) The Motion To Dismiss Standard

Exemplifies Why Plaintiffs Have

Four Separate Claims.

lederal Rule of Civil Procedure 12(b)(6) provides

another lens by which the Court can determine that

Plaintiffs’ four claims are discrete. Rule 12(b) provides

a mechanism for asserting defenses by motion against

“a claim for relief,” allowing dismissal where the

allegations “fail to state a claim upon which relief can

be granted.” Fed. R. Civ. P 12(b) & 12(b)(6).

Were patent-related antitrust claims such as Walker

Process and sham litigation merely “theories”

underlying an omnibus Section 2 claim for relief, each

individually would not be the proper subject of a Rule

12(b)(6) motion. Yet, federal district courts consistently

treat Walker Process and sham litigation claims

separately for Rule 12(b)(6) purposes, often granting

13

dismissal as to one and denying it as to the other. See

e.g., Novo Nordisk of N. Am., Inc. v. Genentech, Inc.,

885 EF. Supp. 522, 527 (S.D.N.Y. 1995) (granting motion

to dismiss plaintiff’s sham litigation claim but denying

motion as to plaintiff’s Walker Process claim); see also

Seiko Epson Corp. v. Glory So. Software Mfg., Inc., No.

06-477, 2010 WL 256505, at *3-5 (D. Or. Jan. 19, 2010)

(dismissing sham litigation counterclaim but not Walker

Process counterclaim); Amgen, Inc. v. FE Hoffmann-La

Roche Ltd., 480 F. Supp. 2d 462, 465, 471 (D. Mass. 2007)

(dismissing sham litigation counterclaim but not Walker

Process, monopolization, and attempted monopolization

counterclaims, among others). Walker Process and sham

litigation claims are subject separately to Rule 12(b)(6)

motions because they are separate claims for relief.

2. There Were No Patent-Related Claims In

Christianson; This Case Is Different.

Plaintiffs’ complaint is not like the one that was at

issue in Christianson. The claims to relief in

Christianson did not depend on a substantial question

of patent law. The Christianson plaintiff sought relief

because of defendant’s monopolistic conduct and

organization of a group boycott. See Christianson v. Colt

Indus. Op. Corp., 822 F.2d 1544, 1556-58 (Fed. Cir. 1987)

(Federal Circuit deciding merits of case despite finding

that it lacked jurisdiction over the appeal), rev'd on other

grounds 486 U.S. 800, 818 (1988) (this Court reversing

because “[o]ur agreement with the Federal Circuit's

eonelusion that it lacked jurisdiction, compels us to

disapprove of its decision to reach the merits anyway

‘in the interest of justice.’”). No patent validity

questions, nor any other substantial questions of

14

patent law, were necessary to the resolution of the

Christianson plaintiff’s affirmative claims for relief.

Christianson, 822 F.2d at 1559, rev'd on other grounds,

486 U.S. 800. The “patent issues” in Christianson arose

only as a response to an anticipated defense of trade

secret validity. Christianson, 822 F.2d at 1559, rev'd on

other grounds, 486 U.S. 800; see also A.J. Gajarsa &

L.P Cogswell, II], The Federal Circuit and the Supreme

Court, 55 Am. U. L. Rev. 821, 824 (2006) (Federal Circuit

Judge Gajarsa explained that “Christianson had brought

an antitrust suit against Colt, and issues of patent law

were implicated only by part of Colt’s defense against

those charges”). Because the “patent issues” in

Christianson were related to a response to a defense,

as opposed to an affirmative claim for relief, they could

not serve as a basis for vesting appellate jurisdiction in

the Federal Circuit. Christianson, 486 U.S. at 809

(“a case raising a federal patent-law defense does not,

for that reason alone, ‘arise under’ patent law, ‘even if

the defense is anticipated in the plaintiff’s complaint,

and even if both parties admit that the defense is the

only question truly at issue in the case’” (quoting

Franchise Tax, 463 U.S. at 14)).°

9. After Christianson, this Court held in Holmes that

compulsory counterclaims which raise patent issues also do not

vest appellate jurisdiction in the Federal Circuit because the

Federal Cireuit’s appellate jurisdiction is determined only by

looking to plaintiff’s well-pleaded complaint. Holmes, 535 U.S.

at 830-32.

Lo

B. Conflicting Circuit Court Case Law Also

Shows That A Patent-Related Claim Gives

The Federal Circuit Exclusive Appellate

Jurisdiction.

Prior to the decision below, the circuit courts that

had considered appellate jurisdiction questions in cases

involving patent-related claims found that such cases

belonged in the Federal Circuit.’? Indeed, the Federal

Circuit expressly stated that Walker Process claims are

“subject to exclusive federal court jurisdiction under

28 U.S.C. § 1338(a) because the determination of fraud

before the PTO necessarily involves a substantial

question of patent law.” Ciprofloxacin, 544 F.3d at 1829

(reaching this conclusion even though the complaint

included other allegations of monopolization that did not

rest entirely on patent law). The Seventh Cireuit took a

similar view in finding that a breach of contract case

that turned on whether a product was within the scope

of a patent should be heard by the Federal Circuit

because the plaintiff there could not obtain the relief it

sought without resolution of the patent issue. U.S

Valves, 190 F.8d at 818-15. These decisions of the

Federal Cireuit and Seventh Cireuit also conflict with

the Second Circuit’s decision below.

10. In at least one case, a regional cireuit court decided a

plaintiff's Walker Process claim without any express mention

of whether it was proper for it to do so and with no indication

that any party raised an appellate jurisdiction argument. Aaise?

Found. Health Plan Inc. v. Abbott Labs, Inc., 552 EF8d 1033

1043-54 (9th Cir. 2009)

16

THE SECOND CIRCUIT'S DECISION ERODES

THE FEDERAL CIRCUIT’S APPELLATE

JURISDICTION IN CONTRAVENTION OF

CONGRESS'S GOAL OF CREATING UNIFOR-

MITY IN PATENT LAW.

The decision of the Second Circuit, if not reversed,

will erode substantially the Federal Circuit’s exclusive

jurisdiction over patent-related antitrust claims. Under

the decision below, if any one of a plaintiff's antitrust

“theories” (actually claims) is not based exclusively on

the patent laws, the entire case must go to the regional

circuit. Pet. App. 15a—l6a. This is inconsistent with

Congress's intention of creating a national appellate

court to harmonize the patent laws and curtail forum

shopping in patent cases. See, e.g., 8S. Rep. No. 97-275

(1981), as reprinted 1n 1982 U.S.C.C.A.N. 11, 15; H.

Rep. No. 97-312, at 20 (1981). Congress explained that

the “central purpose [of creating the Federal Circuit] is

to reduce the widespread lack of uniformity and

uncertainty of legal doctrine that exist in the

se)

administration of patent law.” H. Rep. No. 97-312, at 28.

A. Congress Created The Federal Circuit To

Harmonize The National Patent Laws And

Eliminate Forum Shopping.

The regional circuits handled patent law issues in a

divergent manner before Congress established the

Federal Circuit. The House Report accompanying the

act creating the Federal Circuit expressly notes that

patent law had long “been identified as a problem area,

characterized by undue forum-shopping and unsettling

inconsistency in adjudications.” See, ¢.g., H. Rep. Ne

17

97-312, at 20-21. Congress also found that “the validity

of a patent [was] too dependent upon geography

(7.e., the accident of judicial venue) to make effective

business planning possible.” /d. at 21-22. Similarly,

courts, including this Court, noted the rifts in patent

law that marked that period. See, e.g., Graham v John

Deere Co., 383 U.S. 1, 18 (1966) (observing “a notorious

difference between the standards [fof patentability]

applied by the Patent Office and by the courts”);

Mtg. Res. Corp. v. Graybar Elec. Co., Inc., 679 F.2d 1855,

1361 n.12 (llth Cir 1982) (noting that the cireuit law

regarding the burden of proof for patent invalidity was

“ina morass of conflict”). Congress also established the

Federal Circuit’s exclusive jurisdiction to address the

rampant forum shopping that had plagued patent cases.

S. Rep. No. 97-275, 1982 U.S.C.C.A.N. at 15; H. Rep.

No. 97-312, at 20

The existence of the Federal Cireuit has served to

promote the uniformity that Congress envisioned for

patent law, including by allowing this Court to focus on

key patent law issues (as opposed to dealing with the

circuit conflicts that existed previously).'' See, e.g., H.T.

Markey, The Fe ade ral ( Ure ed it ana Oxey, gre SS ronal I) Tent,

11 Am. U. L. Rev. 577, 577 (1992) (former Federal Circuit

Chief Judge Markey reporting that “in its first three

vears... {the Federal Circuit] identified and resolved

{ the thirteen conflicts in the previous patent law

ll. This Court

Ly to address pi

that Congress creat

+

Sake

aASSUYrING even-nande

of the patent laws.” H.

18

decisions of the regional circuit courts”). The Federal

Circuit has resolved, or aided in the resolution of

important questions including, for example, determining

that claim construction is a matter of law for the court

to decide;? and determining that Federal Circuit law,

and not the law of the regional circuit, applies to

questions of attorney-client privilege between a patent

attorney and a patentee."

B. Vesting Jurisdiction For Patent-Related

Antitrust Appeals In The Federal Circuit

Serves Congress’s Purpose Of Creating

Uniformity In Patent Law.

Congress’s intent in forming the Federal Circuit is

best served by vesting jurisdiction for antitrust claims

that turn on a substantial question of patent law in the

Federal Circuit. While not every patent issue is to be

heard by the Federal Circuit, having patent-related

antitrust claims appealed to the Federal Circuit is well

within the balance struck by Congress in setting the

I‘ederal Circuit’s jurisdiction. Congress recognized as a

potentiai concern that “specious patent claims” would

be tied to “substantial antitrust claims in order to create

jurisdiction in the... Federal Circuit.” S. Rep. No. 97-

275, 1982 U.S.C.C.A.N. at 29-30; H. Rep. No. 97-312, at

41. But Congress concluded that this concern was

unfounded because the Federal Circuit would not have

appellate jurisdiction unless one of a plaintiff’s initial

12. Markman v. Westview Instruments, Inc., 52 F.8d 967,

976 (Fed.Cir.1995) (en banc), aff’d, 517 U.S. 370 (1996).

13. In re Spalding Sports Worldwide, Inc., 203 F.3d 800,

803-04 (Fed. Cir. 2000).

19

claims arose under 28 U.S.C. § 1338, and the Federal

Circuit would strictly construe its jurisdiction. S. Rep.

No. 97-275, 1982 U.S.C.C.A.N. at 29-30; H. Rep. No.

97-312, at 41. Specifically, Congress explained that the

appellate courts would adapt the general “arising

under” test for federal question jurisdiction to determine

whether a plaintiff’s claim “arises under” patent law.

S. Rep. No. 97-275, 1982 U.8.C.C.A.N. at 29-30; H. Rep.

No. 97-312, at 41. And Congress understood that cases

raising “patent issues merely couched in antitrust

terms” would be appealed to the Federal Circuit. S. Rep.

No. 97-275, 1982 U.S.C.C.A.N. at 46.

II. THE SECOND CIRCUIT’S DECISION WILL

ALLOW A CLEVER PLAINTIFF TO PLEAD

ITS PATENT-RELATED ANTITRUST CLAIMS

INTO THE REGIONAL CIRCUIT AND AVOID

THE FEDERAL CIRCUIT.

The Second Circuit’s decision below threatens the

national uniformity of patent law, raises again the hazard

of forum shopping in patent cases, and takes important

patent law questions away from the Federal Circuit. The

decision below will allow private litigants, rather than

Congress or the courts, to determine which regional

circuit has jurisdiction over the same patent-related

antitrust claim by altering the stvle, but not the

substance of their allegations.

This Court has cautioned against adopting rules

that permit jurisdiction to be created through creative

pleadings. Fed. Dept. Stores, Inc. v. Mortie, 452 US.

394, 397 n.2 (1981) (e2ting 14 Wright, Miller & Cooper,

Federal Practice & Procedure § 3722, at 564-66 (1st ed.

20

1976) (““[Courts] will not permit plaintiff to use artful

pleading to close off [a] defendant’s right to a federal

forum ...”). Christianson itself states that it is the

court’s obligation to determine the “real nature” of the

claim “regardless of plaintiff’s characterization.”

486 U.S. at 809 n.3 (“a plaintiff may not defeat § 1338 (a)

jurisdiction by omitting to plead necessary federal

patent-law questions.” (crteng Franchise Tax, 463 U.S.

at 22; Moitie, 452 U.S. at 397 n.2)). The real substance

of a plaintiff’s claims—the key that unlocks appellate

jurisdiction—cannot change no matter how artfully the

claims are styled in the complaint. Christianson, 486

U.S. at 809 n.3; Morte, 452 U.S. at 397 n.2.

But the Second Circuit’s decision below did not

determine the “real nature” of Plaintiffs’ claims; it

allowed the style of Plaintiffs’ complaint—a one-count

monopolization complaint—to control the number of

substantive claims it found. The Second Circuit’s

decision thus wrongly promotes form over substance by

failing to consider the actual nature of Plaintiffs’ well-

pleaded claims as required by Christianson. As a result,

uniformity in crucial areas of the patent law on important

questions will be lost. Allowing private litigants to

determine which circuit court hears a patent-related

antitrust claim is neither what Congress intended in

establishing the Federal Circuit’s jurisdiction, nor a

beneficial development for patent law or owners of

intellectual property who rely on relative stability in

patent law as they develop and protect their inventions.

21

CONCLUSION

IPO respectfully requests that the Court grant the

petition for a writ of certzora7z.

Respectfully submitted,

DouUGLAS NORMAN, President

KEVIN H. RuHoves, Chair,

Amicus Brief Committee

HERBERT C. WAMSLEY”%,

veecutive Director

INTELLECTUAL PROPERTY

OwNERS ASSOCIATION

1501 M Street, NW

Suite 1150

Washington, DC 20005

(202) 507-4500

herb@ipo.org

JOHN L. NORTH

PETER G. Pappas

JosHuA D. CurRY

SUTHERLAND ASBILL

& BRENNAN LLP

999 Peachtree Street N.E.

Atlanta, GA 30309

(404) 853-8000

Counsel for Amicus Curiae

Intellectual Property Owners Association

* Counsel of Record

APPENDIX

la

APPENDIX

Members of the Board of Directors

Intellectual Property Owners Association

T.J. Angioletti

Oracle USA, Ine.

Angelo N. Chaclas

Pitney Bowes Ine.

William J. Coughlin

Ford Global

Technologies LLC

Timothy J. Crean

SAP AG

Robert DeBerardine

Sanofi-Aventis

Jeanne D. Dodd

Dow Corning Corp.

Bart Eppenauer

Microsoft Corp.

Seott M. Frank

AT&T

Michael L. Glenn

Dow Chemical Co.

Sernard J. Graves, Jr.

Eastman Chemical Co.

Krish Gupta

EMC Corporation

Jack E. Haken

Koninklijke Philips

Klectronies N.V.

Dennis R. Hoerner, Jr.

Monsanto Co.

Carl B. Horton

General Electric Co.

Soonhee Jang

Danisco U.S. Ine.

Michael Jaro

Medtronic, Ine.

Jennifer K. Johnson

ZymoGenetics, Ine.

Philip S. Johnson

Johnson & Johnson

2a

—_—

Appendix

George William Johnston

Hoffman-La Roche Inc.

Lisa K. Jorgenson

ST Microelectronics

Dean Kamen

DEKA R&D Corp.

Charles M. Kinzig

GlaxoSmithKline

David J. Koris

Shell International B.V.

Michelle Lee

Google Inc.

William C. Lee, III

Coca-Cola Co.

Kevin Light

Hewlett-Packard Co.

Richard J. Lutton, Jr.

Apple Inc.

Traci Medford-Roscow

Pfizer, Ine.

Jonathan PR Meyer

Motorola, Inc.

Steven W. Miller

Procter & Gamble Co.

Jeffrey L. Myers

Adobe Systems Ine.

Douglas K. Norman

Eli Lilly and Co.

Richard F. Phillips

Eixxon Mobil Corp.

Sean O’Brien

United Technologies

Corp.

Kevin H. Rhodes

3M Innovative

Properties Co.

Mark L. Rodgers

Air Products &

Chemicals, Inc.

Manny Schecter

IBM Corp.

Robert R. Schroeder

Mars Incorporated

David M. Simon

Inte! Corp.

«F

Ja

Appendix

Dennis C. Skarvan James. J. Trussell

Caterpillar Ine. BP America, Inc.

Russ Slifer Michael Walker

Micron Technology, Inc. DuPont

Wayne Sobon Stuart L. Watt

Accenture Global Amgen, Inc.

Services GmbH

Don Webber

Daniel J. Staudt Covidien

Siemens Corp.

Paul D. Yasger

3rian K. Stierwalt Abbott Laboratories

ConocoPhillips

Thierry Sueur

Air Liquide