# Opposition Brief — Vanderbilt University v. ICOS Corp.

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URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386017_2525%3A2

## Record

- **Collection:** Supreme Court brief
- **Document type:** Opposition Brief
- **Published:** January 1, 2011
- **Citation:** 562 U.S. 1199

## Text

37
ZF

No. 10-412

IN THE

Siyneme Court of the United States

VANDERBILT UNIVERSITY,
Petitioner,
Vv.

ICOS CORPORATION,
Respondent.

ON PETITION FOR A WRIT OF CERTIORARI TO THE
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT

BRIEF IN OPPOSITION

THOMAS I. ROSS
Counsel of Record
KEVIN M. FLOWERS
MATTHEW C. NIELSEN
MARSHALL GERSTEIN
BORUN LLP
233 South Wacker Drive
6300 Willis Tower
Chicago, IL 60606
(312) 474-6300
tross@marshallip.com

AL EA AERTS LEN TLE AE IE IGS SI ey He

WILSON-EPES PRINTING CO., INC. - (202) 789-0096 — WASHINGTON, D. C. 20002

QUESTIONS PRESENTED

|. Whether the lower courts were correct in re
jecting Petitioner’s request to add its scientists as co-
inventors on patents under 385 U.S.C. § 256, where the
district court found that Petitioner’s theory regarding
its scientists’ alleged contribution to the inventions,
when compared to the contrary account established by
the patent owner, was at best only “equally plausible.”

2. Whether a court of appeals may affirm a dis-
trict court’s judgment on an alternative ground sup-
ported by the record.

(i)

CORPORATE DISCLOSURE STATEMENT

[COS Corporation is a wholly-owned subsidiary of
[eli Lilly & Company, which is publicly traded.

(11)

TABLE OF CONTENTS

Page

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CORPORATE DISCLOSURE STATEMENT............. ii

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A. Dr. Daugan’s Invention Of The Pat-

ented Compounds.....................+. ‘caueesuiecsheaaetien ean 4

B. Proceedings in the District Court .........0............ 7

C. Proceedings in the Court of Appeals ............... 11

REASONS FOR DENYING THE PETITION .......... 13

I. THE STANDARD OF PROOF IS Nor QOur-
COME-DETERMINATIVE AND DOES NOT
I 13

A. This Case Is An Unsuitable Vehicle
Because Reversal On The Question
Presented Cannot Alter The Outcome ............ 14

B. Even If This Case Were A Suitable Vehi-
cle, The Clear-And-Convincing-Evidence
Standard For Correction-Of-Inventorship
Claims Would Not Merit Review ...................... 21

Il. AN APPELLATE COURT’S AUTHORITY TO
AFFIRM ON AN ALTERNATIVE GROUND
SUPPORTED By THE RECORD IS SETTLED,
PARTICULARLY WHERE THE DISTRICT

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TABLE OF AUTHORITIES

CASES
Page(s)
ACEquip Ltd. v. American Engineering Corp.,
SEG Ol BBE Ca i inccicielocscisoess ects 26
Abuelhawa v. Uniied States, 129 S. Ct. 2102

Acme Highway Products Corp. v. D.S. Brown
Co., 431 F.2d 1074 (6th Cir. 1970), cert. de-

webanel, GPR TF Te. Te CRB hiccsccccecvisscrscenesecommsssesatsnns 21, 23
Amax Fly Ash Corp. v. United States, 514 F.2d

SOGT TEA. Ce Fe inivititicnittinasenttheauncsee
Barth v. Gelb, 2 F.3d 1180 (D.C. Cir. 1998).................... 21
Beall v. Ormsby, 154 F.2d 663 (C.C.P.A. 1946)... 19
Beck v. Praupis, 529 U.S. 494 (QOD) cesccssvscnessesscessstsenecsass 22
Berenyt v. District Director, INS, 385 U.S. 630

CIEE D wisd:covcesepce'counevincipuceneeismcaceccemienausnababiaanmanacant 17
Berquist v. Washington Mutual Bank, 500

© ee BR CAR FED viticcnctcinissinaiiscncsiniiceiaets 26
Bowoto v. Chevron Corp., 621 F.3d 1116 (9th

RA iirc cesknncondicccuip comuiineccnatnctlcegvadsinae dunia deuntasaieccpoas 21
Brooks v. Ross, 578 F.3d 574 (7th Cir. 2009) ..............0 26

Cannon v. University of Chicago, 441 U.S. 677

Carreras v. Sajo, Garcia & Partners, 596 F.3d
Ee Ee Be tna acebhccasines cs shlciaendintapiacncniens 26

Cates v. Morgan Portable Building Corp., 780
Fee ee Rey EE pecssicsssaceoleraceascrenin 21

V

TABLE OF AUTHORITIES—Continued

Concrete Pipe & Products of California, Inc. v.
Construction Laborers Pension Trust for
Southern Calrfornia, 508 U.S. 602 (1993)......

Cook Brotech Inc. v. ACell, Inc., 460 F.3d 13865
i Gs SIs oietectcvccutsincscacsieasccuann aera.

Davis v. Roberts, 425 F.3d 830 (10th Cir. 2005) ...

Deering v. Winona Harvester Works, 155 U.S.
RS ays oicttescniinn vansnan sa teivkca raves nda tancameainnees
Director, Office of Workers’ Compensation
Programs v. Greenwich Collieries, 512 US.
Be CE iatisicciseinnndonssuemeimanesaene

Eli Lilly & Co. v. Aradigm Corp., 376 F.3d
DE 0 Sra, BE sesaitbinsisstecccactsssteasstrsncevacias

Ethicon, Inc. v. U.S. Surgical Corp., 185 F.8d
Re Oe Ok Cah. RE satcsessnnkiancaceovtsnasasmnseniinn

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabu-
SCE EO. SA UB. Te Ct cs ccesesissesscenencsccees
Friends of Tims Ford v. TVA, 585 F.8d 955
Gee es ts ee
Garrett Corp. v. United States, 422 F.2d 874
eee SP isctnsskscnenicansaveisaenoaneae

Gonzales v. O Centro Espirita Beneficente
Uniao do Vegetal, 546 U.S. 418 (2006) ...........

Goodyear Atomic Corp. v. Miller, 486 U.S. 174
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Graver Tank & Manufacturing Co. v. Linde
Aw Products Co., 36 US. 271 C194) siccscscss:

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TABLE OF AUTHORITIES— “Continued
Page(s)

Green v. CSX Transportation, Inc., 414 F.3d
FCT Ci Be cicsisrisitieaesmariaticnsiucioon 26

Hess v. Advanced Cardiovascular Systems,
Inc., 106 F.3d 976 (Fed. Cir. 1997)............... 17, 23, 25

Impax Laboratories, Inc. v. Aventis Pharma-
ceuticals Inc., 468 F.3d 1366 (Fed. Cir.
BT sacik ccs tksniscepsiscilideasenaan a ee 27

Jaffke v. Dunham, 352 U.S. 280 (1957) weecceecccseessseeeee 3, 25

Kimberly-Clark Corp. v. Procter & Gamble
Instributing Co., 973 F.2d 911 (Fed. Cir.

BUF ssn caxstsesediacssesdsguetasscaciotia nen tae 19
Koziara v. City of Casselberry, 392 F.8d 1302

CRE, Be iieitesiccsciuenccceponnnainztuicnen 26
Levin v. Septodont Inc., 34 F. App’x 65 (4th

Oe, BE isiscxisactscnisiceeatccmsieclassnuntadeauens nee 23
Merck & Co. v. Reynolds, 130 8. Ct. 1784 (2010)......3, 22
Miles v. Apex Marine Corp., 498 U.S. 19 (1990)........... 22
Monsanto Co. v. Kamp, 269 F. Supp. 818

Sa ED csncccaterascatinehsarciiedisiesatesrenenraeeiane 23

Morgan Stanley Capital Group Inc. v. Public
Utility District No. 1 of Snohomish

County, 128 S. Ct. 2733 (2008) ...c.scccceccssesecssseeeesseeeee 26
North Star Steel Co. v. Thomas, 515 U.S. 29

5 SLIT A IEE CII ARTA RMIO Re RID Chto Ps 22
Pointer v. Six Wheel Corp., 177 F.2d 153 (9th

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Price v. Symsek, 988 F.2d 1187 (Fed. Cir. 1998)........... 16

Vii

TABLE OF AUTHORITIES—Continued

Pullman-Standard v. Swint, 456 U.S. 2738
el oe sbsananscportentinnensey

Schaffer ex rel. Schaffer v. Weast, 546 U.S. 49
artnet oars Cuda end ass uadtiaasaagieaienecatnnss

Serrano v. Francis, 345 F.3d 1071 (9th Cir.
EEE ea RE EE ol ne

Shelton v. Kennedy Funding, Inc., 622 F.3d
Be CURE CAE, oss sscssdiceessssscaseesacnsiensceneasocennss

Shepard v. United States, 544 U.S. 13 (2005).......

Shum v. Intel Corp., 499 F.3d 1272 (Fed. Cir.
SF RRS ORS ORF ROS OM Re RT PO Pe er

Siegert v. Gilley, 500 U.S. 226 (1991).................

Sommerville v. United States, 376 U.S. 909
(_. SRPRANERPRERS aeaster SoS EN NOOR PS RE AAC Aa nO

Stern v. Trustees of Columbia University in
City of New York, 434 F.3d 13875 (Fed. Cir.
BIE stiieserieiaessadeleseedresaruces this aoscckongcusdidaacquieetios

T.I.M.E. Inc. v. United States, 359 U.S. 464
Beets i ERIE ae epee eae een PO

The Barbed Wire Patent, 143 U.S. 275 (1892)......
Thigpen v. Roberts, 468 U.S. 27 (1984)...........0..2..

Tourscher v. McCullough, 184 F.3d 236 (3d Cir.
UN se dliscasaicckrucdcapasos abn cadeaessnaiaes ack amenncacdiecbas

Trovan, Ltd. v. Sokymat SA, 299 F.3d 1292
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United States v. Hasan, 609 F.3d 1121 (10th
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TABLE OF AUTHORITIES—Continued

Page(s)
United States v. Johnston, 268 U.S. 220 (1925)....0.00..... 17

United States v. Smith, 395 F.2d 516 (4th Cir.

ESET RnR BOE IO aL OE eR IN FOREN E RNE 26
United States v. Sommerville, 324 F.2d 712 (8d

a os amamaadiianaeiaesmeatcneasacsetens 15
W.L. Gore & Associates, Inc. v. Garlock, Inc.,

TS ete Be Ci EE, Cee, BID wtenececesstnnciasensésneceeesnasss 27
Watson v. United States, 552 U.S. 74 (2007) .............3, 23

DOCKETED CASES

D.S. Brown Co. v. Acme Highway Products
Gee, FE, Fil EE CU) oo Pecenicsrsersincocssnsissecsssnsasrnnscsscns 21

Microsoft Corp. v. 141 Ltd. Partnership, No. 10-
Be A EF stosnecliigckencls tinsencianzauastacsinacsecgenainlans passim

STATUTES AND RULES
35 U.S.C.

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OTHER AUTHORITIES
1 Chisum on Patents (Nov. 2007) ..........ccccccccscccscscccscecees 24

Gressman, Eugene, et al., Supreme Court
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Lutz, Karl B., The New 1952 Patent Statute, 35
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1X
TABLE OF AUTHORITIES—Continued
Page(s)
2 McCormick on Evidence (6th ed. 2006) ........ ee. 24

1 Mueller, Christopher B., & Laird Kirkpatrick,
Federal Evidence (8d ed. 2007) .............ccccccceeeeceeeeees 14

IN THE

Supreme Court of the United States

No. 10-412

VANDERBILT UNIVERSITY,
Petitioner,

LCOS CORPORATION,
Respondent.

ON PETITION FOR A WRIT OF CERTIORARI TO THE
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT

BRIEF IN OPPOSITION

INTRODUCTION

Neither of the questions presented by Petitioner
Vanderbilt University merits this Court’s attention.
Vanderbilt lost this case not because it faced a “clear
and convincing” standard of proof, but because it failed
to convince the district court that its theory based on
speculation was any more than “equally plausible”
when compared to ICOS’s contrary account based on
evidence. Pet. App. 82a. There is no need for this
Court to review a case where, as here, the question
presented will have no effect on the outcome. Vander-
bilt’s petition should be denied.

2

1. Although the question this Court will review in
Microsoft Corp. v. 141 Ltd. Partnership (No. 10-290)—
the appropriate standard of proof for claims of patent
invalidity over prior art references not submitted to
the Patent Office—bears some resemblance to Vander-
bilt’s first question presented, this Court’s review of 747
does not warrant granting or even holding Vanderbilt’s
petition, for at least two reasons.

First, and critically, the Federal Circuit’s disposi-
tion of this case was manifestly correct regardless of
what standard of proof is applied. As the district court
found, and Vanderbilt does not deny, the record con-
tains a complete “lack of evidence” supporting Vander-
bilt’s argument on several essential points. Pet. App.
79a-80a n.50. The district court accordingly held that,
at the very most, Vanderbilt’s speculative theory of
events was “equally plausible” when compared to
[COS’s contrary account based on the evidence. /d.
82a. That finding is dispositive, because it confirms
that Vanderbilt failed to prove even by a preponder-
ance of the evidence that its scientists should be added
as co-inventors. Where, as here, the resolution of the
question presented “is irrelevant to the ultimate out-
come of the case before the Court, certiorari may be
denied.” Gressman et al., Supreme Court Practice
§ 4.4(f), at 248 (9th ed. 2007).

Second, even were this Court to conclude in 747 that
a preponderance-of-the-evidence standard applies to
invalidity challenges based on prior art references not
submitted to the Patent Office, that would not compel
application of a similar standard in the correction-of-
inventorship context of this case. Judicial decisions re-
quiring clear and convincing evidence in order to cor-
rect inventorship date back decades, including prior to
the 1952 enactment of the current Patent Act. Con-

-*
~~

gress’s enactment of 35 U.S.C. § 256 did not purport to
alter that common law standard, and Congress’s con-
tinued failure to disturb it demonstrates legislative ac
quiescence. See, e.g., Merck & Co. v. Reynolds, 130 S.
Ct. 1784, 1795 (2010) (“We normally assume that, when
Congress enacts statutes, it is aware of relevant judi-
cial precedent.”); Watson v. United States, 552 U.S. 74,
82-83 (2007) (prolonged congressional inaction following
judicial construction of a statute ““enhance[s| even the
usual precedential force” accorded statutory interpre-
tations (quoting Shepard v. United States, 544 U.S. 13,
23 (2005))). Congress’s approval of the clear-and-
convincing-evidence standard is confirmed by its con-
tinued refusal to revise the proof requirements in cor-
rection-of-inventorship cases. Notably, not one of the
amici supporting Microsoft’s petition in 247 has sup
ported Vanderbilt’s petition here.

2. Vanderbilt’s second question presented is also
unworthy of review. It is settled law that “[a] success-
ful party in the District Court may sustain its judgment
on any ground that finds support in the record.” Jaffke
v. Dunham, 352 U.S. 280, 281 (1957) (per curiam).
Every court of appeals has applied this rule repeatedly,
including in cases in which the district court has com-
mitted harmless legal error. Nothing in this Court’s
decision in Pullman-Standard v. Swint, 456 U.S. 273
(1982), alters that established principle of appellate re-
view, particularly where—as here—the court of ap-
peals affirms on a basis that the district court itself
adopted as an alternative ruling.

4

STATEMENT

A. Dr. Daugan’s Invention Of The Patented
Compounds

This case turns on research conducted by Dr. Alain
Daugan, a medicinal chemist at a Glaxo Wellcome Inc.
research facility in Les Ulis, France. Pet. App. 33a-36a.
In the early 1990s, Dr. Daugan invented certain chemi-
cal compounds that, along with compositions compris-
ing them and methods for using them, are claimed in
U.S. Patents Nos. 5,859,006 (the '006 patent) and
6,140,329 (the ’829 patent), both of which were assigned
to Respondent ICOS Corporation. The parties “agree
that Dr. Daugan was the first to conceive” the claimed
compounds. /d. 23a.

The specific compounds Dr. Daugan invented pro-
vide for increased relaxation of smooth muscle tissue,
resulting in the widening of blood vessels (vasodilation)
and increased blood flow. Pet. App. 34a. The com-
pounds, known as “PDE5 inhibitors,” inhibit the func-
tion of an enzyme called phosphodiesterase V
(“PDE5”), which would otherwise break down a cyclic
nucleotide called cyclic guanosine monophosphate
(“cGMP”). When not broken down, cGMP activates an-
other protein called cGMP kinase, which causes smooth
muscle tissue to relax. /d.

The net effect of PDES inhibitors is srnooth-muscle
relaxation and increased blood flow. Pet. App. 34a. As
a result, PDE5 inhibitors can be effective in treating
erectile dysfunction (“ED”). Jd. 3a. One of the com-
pounds Dr. Daugan invented, tadalafil, became the ac-
tive ingredient in Cialis®, one of the world’s best-
selling drugs for the treatment of ED.

Tadalafil and the other claimed compounds that Dr.
Daugan invented are tetracyclic (2.e., four-ringed)

3)
molecules that comprise a particular three-ringed sub-
structure known as a “beta-carboline.” Pet. App. 59a.
Dr. Daugan’s invention of tadalafil resulted from a
comprehensive chemical study between 1992 and 1994
that began with a “lead” compound that Glaxo desig-
nated GR380040x, which also had a beta-carboline sub-
structure. Jd. 60a. Dr. Richard Labaudiniére, the head
of chemistry and leader of Glaxo’s PDE5 project in
I'rance, asked Dr. Daugan to modify GR380040x, which
(along with other beta-carboline lead compounds) had
been identified at Glaxo as a potent PDE5 inhibitor. /d.
62a. Dr. Daugan then worked independently to make
structural modifications to the beta-carboline backbone
(the “seaffold”) of GR30040x.

Dr. Daugan conducted an extensive series of ex-
periments as he sought, through “trial and error,” to
create a more potent, selective, and orally effective
PDE5 inhibitor. Ct. App. J.-A. 453:19-455:17. As part of
that search, he made a series of analogs of GR30040x,
creating “several hundred[]” compounds as he strove
“to identify the best compound.” /d. 674:12-20. For
example, from June to December 1992, Dr. Daugan fo-
cused on compounds with a four-ring backbone com-
prising a three-ring beta-carboline structure linked to a
five-membered “hydantoin” ring, but these proved inef-
fective when taken orally. /d. 693:23-700:3. Dr. Daugan
then tried replacing the five-membered hydantoin ring
found in the GR30040x analogs with a six-membered
piperazinedione ring, a substitution that led to his dis-
covery of a group of compounds that he later desig-
nated “Formula (L)” in the patents-in-suit. Jd. 699:22
701:19, 2650, 7553-7562, 7517. Dr. Daugan continued
studying and altering this new family of compounds,
creating and testing scores of compounds with dispa-

6

rate chemical substituents, and by June 1993, he had
invented tadalafil. /d. 662:6-664:4, 701:7-708:22.

Dr. Labaudiniére explained his initia] identification
of GR30040x as a “lead” compound, testifying without
contradiction that his attention was drawn to two other
beta-carbolines, designated CC128002 and GR35273,
because scientific literature and a separate Glaxo pro-
ject had described them as inhibiting PDE5. Ct. App.
J.A. 470:7-471:4. Dr. Labaudiniére searched Glaxo’s
chemical-compound database for compounds with simi-
lar substructures and discovered potential candidates
for further research, including GR30040x. Jd. 470:7-25,
967. This unchallenged account was confirmed by tes-
timony from Dr. Daugan and two experts, as well as by
minutes from Glaxo meetings and Glaxo France’s con-
temporaneous 1992-1993 Annual Report. Pet. App.
65a-69a; Ct. App. J.A. 2639-2699.

Dr. Daugan and Glaxo first sought patent protec-
tion for tadalafil and the other claimed compounds in
1994, when Glaxc filed a U.K. patent applieation. A
U.S. patent application was filed under the Patent Co-
operation Treaty in 1995, issuing as the ’006 patent in
1999. A second U.S. patent application directed specifi-
cally to the use of tadalafil to treat ED was filed in 1996
and issued as the ’329 patent in 2000. The relevant pat-
ent claims are directed to particular chemical com-
pounds, pharmaceutical compositions comprising those
compounds, and methods for using those compounds.
Pet. App. 34a-36a. The rights in these inventions had
previously been assigned to ICOS. Id. 7a, 34a.

In 2002, [COS obtained approval to market tadala-
fil as the active ingredient in Cialis®, a commercial ED
drug. In 2007, ICOS was acquired by Eli Lilly & Com-

pany.

7

B. Proceedings in the District Court

On July 20, 2005, years after Dr. Daugan obtained
his patents and well after Cialis® became a commercial
success, Petitioner Vanderbilt University sued [COS
under 35 U.S.C. § 256, alleging that three of its profes-
sors—Dr. Jackie D. Corbin, Dr. Sharron H. Francis,
and Dr. Sekhar R. Konjeti—should be added to the
patents-in-suit as joint inventors with Dr. Daugan. Pet.
App. 2a.

The district court held a bench trial on Vanderbilt’s
correction-of-inventorship claim. Vanderbilt did not
contend that its professors had conceived tadalafil; the
parties agreed that Dr. Daugan alone had done so. Pet.
App. 28a. The Vanderbilt professors acknowledged
that they had never had any contact with Dr. Daugan:
Dr. Corbin admitted that he “never met Dr. Daugan,”
had no “direct connection with Dr. Daugan,” had “never
worked together with Dr. Daugan to solve any kind of a
problem,” and was “working independently” from Dr.
Daugan. Ct. App. J.A. 386:4-387:5. Dr. Konjeti simi-
larly admitted that he “didn’t know that Dr. Daugan
existed” and “never had any collaboration” with him.
Id. 595:16-28. The record contains no evidence or sug-
gestion that either the professors or Vanderbilt ever
filed any application claiming inventorship of any com.
pounds comprising a beta-carboline substructure, and
certainly not tadalafil or any of the other compounds
claimed in the ’006 patent.

The evidence also showed that the Vanderbilt pro
fessors had no inkling that the beta-carboline com-
pounds Dr. Daugan was studying could even be used as
PDE5 inhibitors. Pet. App. 79a (citing Vanderbilt’s
written responses to ICOS’s Requests for Admission).
Dr. Corbin admitted that he “didn’t know that anyone

8

in the world was working on beta-carboline compounds
to make PDE-5 inhibitors” in 1992 or 1993, and he
“didn’t think of using beta-carboline compounds” at
that time. Ct. App. J.A. 383:3-14. Dr. Konjeti similarly
admitted that he “didn’t know that beta-carboline com-
pounds could inhibit PDE,” was not aware of the struc-
ture of the compounds claimed in the patents, and
“hadn’t thought of any methods for making the ... com-
pounds claimed in the patents.” Jd. 592:5-593:20,
594:16-595:2. Accordingly, Vanderbilt likewise filed no
patent applications directed to the uses of such com-
pounds claimed in the 329 patent.

Instead of allegations as to conception of the com-
pounds and uses at issue, Vanderbilt rested its claim to
joint inventorship on a highly attenuated “theory” or
“hypothesis.” Pet. App. 72a, 73a, 82a. Specifically,
Vanderbilt ventured that a non-beta-carboline PDE5
inhibitor its professors identified—a compound known
as 8-(4-hydroxy phenylthio)-isobutylmethylxanthine,
designated an “IBMX analog”—led to Dr. Daugan’s in-
vention of the beta-carboline compounds claimed in the
patents. /d. 36a. Vanderbilt’s theory involved a com-
plex chain of hypothetical events, none of which was
supported by evidence. Indeed, Vanderbilt admitted
that it had “no direct evidence to support its view of the
facts,” but took the position that it “‘need not prove
specifically how [its version of events] occurred, but
simply how it logically could have occurred.” Pet. App.
17a; see also id. 73a.

Vanderbilt’s theory was that Dr. Daugan’s discov-
ery of tadalafil resulted from the Vanderbilt professors’
recognition of potent PDE5 inhibition by the IBMX
analog (which was not a beta-carboline). The profes-
sors had included their finding regarding the IBMX
analog in a January 3, 1992 research funding proposal

9

sent to Dr. Barry Ross, a scientist at Glaxo U.K. Pet.
App. 5a. On April 8, 1992, Dr. Ross forwarded the pro-
posal to a group including Dr. Labaudiniére. /d. 6a. At
that point, Vanderbilt’s theory departed the realm of
evidence and rested entirely on speculation. Vander
bilt contended, without evidentiary support, that (1)
Dr. Labaudiniére immediately read the proposal; (2) he
somehow recognized four unidentified “structural fea
tures” of Vanderbilt’s [BMX analog that were purport-
edly central to its inhibition of PDE5; and (8) he used
some of those “features” to inform the database search
that led him to identify GR30040x, which he then di-
rected Dr. Daugan to research. /d. 73a-75a. Alterna-
tively, Vanderbilt argued (4) that Dr. Daugan himself
learned of the Vanderbilt professors’ disclosure of the
IBMX analog, and (5) used some of that IBMX analog’s
features to guide his modification of GR30040x, which
eventually led to his invention of the patented com-
pounds. /d. 75a-76a.

As mentioned, Vanderbilt had no direct evidence
for its speculative chain of events. Indeed, the features
that it argued Dr. Labaudiniére utilized and conveyed
to Dr. Daugan--which it now refers to as “Vanderbilt
Structural Features’”—were not identified as being
necessary or sufficient for improving the potency of any
PDE5 inhibitor in any contemporaneous document, in-
cluding the January 1992 proposal or any other internal
Vanderbilt documents. Ct. App. J.A. 423:11-425:3,
756:5-12, 763:13-765:19, 843:14-847:3, 1881-1836. Indeed,
prior to an expert report and testimony in this case (2d.
418:6-24), Vanderbilt had never referred to these ele-
ments as a related set of features in any communication
to Glaxo. Nor did Vanderbilt name these elements the
“Vanderbilt Structural Features” until after the trial
had finished—the first such mention appeared in Van-

10

derbilt’s post-trial brief. Dkt. No. 149 at 22 (D. Del.
Feb. 25, 2008).

ICOS countered Vanderbilt’s speculation with ex-
tensive evidence, including contemporaneous docu-
ments and undisputed testimony from fact and expert
witnesses, all of which showed that the Vanderbilt pro-
fessors’ research had no influence on either Dr. La-
baudiniére or Dr. Daugan. As for Vanderbilt’s first
theory, unrebutted testimony showed that Dr. La-
baudiniére (1) did not conduct his search for beta-
carboline compounds based on the supposed “Vander-
bilt Structural Features”; (2) would not have conducted
such a search because it would have been scientifically
unsound and impractical; and (3) would not have dis-
covered GR30040x by performing the search as Van-
derbilt conjectured. Ct. App. J.A. 488:21-489:12, 470:7-
471:4, 942:16-24. Indeed, Dr. Labaudiniére’s unrebut-
ted testimony showed that he did not know about Van-
derbilt’s research until June 1998--months after Dr.
Daugan conceived the claimed compounds. /d. 438:21
439:12, 7369.

Regarding Vanderbilt’s alternative theory that Dr.
Daugan himself knew of and was influenced by the
Vanderbilt professors’ IBMX analog, Dr. Daugan pro-
vided direct and unchallenged testimony that, before
the lawsuit, he had never (1) seen any document writ-
ten by the Vanderbilt professors, (2) seen the results of
any experiment they conducted, (8) discussed their
work with anyone, (4) known anything about their re-
search, or (5) been influenced by any theory based on
the “structural features” of an IBMX analog. Ct. App.
J.A. 668:17-669:4. Rather, Dr. Daugan explained that
his effort was an independent, extensive empirical re-
search study based on trial and error, explicitly stating
that “no information and no one influenced [him] in the

1]

design and conception of the [claimed] compounds.” /d.
674:6-7; see also id. 658:17-659:3, 660:5-9, 660:22-661:21,
674:3-20, 677:13-684:6, 693:19-708:17. Finally, Dr. Dau-
gan testified that, even if he had known that the IBMX
analog was a potent PDE5 inhibitor, that would not
have helped him design the claimed beta-carboline
compounds, because the two different kinds of com-
pounds had no relevant structural similarity. /d. 673:1-
11; see also id. 7516-7542.

The district court ruled that Vanderbilt failed to
prove that Drs. Corbin, Francis, or Konjeti were inven-
tors of either the ’006 or ’329 patents. Pet. App. 3la-
83a. The court articulated two reasons for rejecting
Vanderbilt’s correction-of-inventorship claim. F rst,
the court ruled that there was “no evidence that [tne
Vanderbilt professors] ever conceived the ‘specific
chemical structure of the compound’ claimed,” a matter
the court deemed dispositive under binding precedent.
Id. 7T9a-80a n.50. Second, the court noted the “lack of
evidence” supporting Vanderbilt’s theory that Dr. La-
baudiniére communicated any of Vanderbilt’s “struc-
tural features” to Dr. Daugan. /d. 79a n.50. As for how
Dr. Labaudiniére identified GR30040x, while the court
criticized [COS’s position in some respects (7d. 80a-81a),
its ultimate conclusion was that both parties’ accounts
were “equally plausible with respect to the identifica-
tion of GR380040x.”: Id. 82a.

C. Proceedings in the Court of Appeals

The Federal Circuit affirmed on the second basis
articulated by the district court. As to the first basis,
the court of appeals accepted Vanderbilt’s argument
that a co-inventor need not have “an independent men-
tal picture of the complete compound claimed”; it suf-
ficed that “a group of co-inventors must collaborate and

12

work together to collectively have a definite and per-
manent idea of the complete invention.” Pet. App. 22a.

However, the court of appeals affirmed based on
the district court’s finding that the parties’ accounts of
the identification of the GR30040x compound—which,
though not claimed in the patents, was the linchpin of
Vanderbilt’s theory of co-inventorship—-were “‘equally
plausible” and that “Vanderbilt failed to produce any
evidence of joint invention of tadalafil.” Pet. App. 23a.
Accordingly, the court ruled that, “under the correct
legal test, Vanderbilt did not carry its burden. Thus,
any erroneous interpretations of our case law were
harmless error.” J/d.; see also id. 19a (“These errors,
however, do not affect the outcome of this appeal and
are therefore harmless in context. When tested by the
correct law, the facts of the case still require affir-
mance.”).

Judge Dyk concurred in part and dissented in part.
Judge Dyk agreed that the evidence supported the dis
trict court’s ruling that Dr. Daugan “did not himself di-
rectly utilize the Vanderbilt scientists’ contributions.”
Pet. App. 26a. Judge Dyk maintained, however, that
the court “could not have properly found that the Van-
derbilt scientists made a contribution to the identifica-
tion of GR380040x if it were ‘equally plausible’ that they
did not make a contribution.” /d. 28a. Alternatively,
Judge Dyk believed that the district court’s opinion
could be read as irretrievably “tainted” by its legal er-
ror that a joint inventor was required to conceive the
entire claimed invention. /d. 28a-29a.

The Federal Circuit denied Vanderbilt’s petition
for rehearing and rehearing en banc. Pet. App. 86a-87a.

13
REASONS FOR DENYING THE PETITION

I. THE STANDARD OF PROOF IS NOT OUTCOME-
DETERMINATIVE AND DOES NOT MERIT REVIEW

Vanderbilt’s attempt to hitch its wagon to this
Court’s grant of certiorari in 247 depends on ignoring
Vanderbilt’s failure to convince either the district court
or the court of appeals that its theory of events based
on speculation was any more plausible than [COS’s ac-
count of the invention based on evidence. Even if this
Court were to grant certiorari, receive merits briefs,
hear oral argument, and reverse the Federal Circuit’s
application of a “clear and convincing” standard of
proof, the outcome would be exactly the same: a judg-
ment that Vanderbilt failed to carry its burden, because
the district court found that Vanderbilt’s theory was no
more than “equally plausible” compared to ICOS’s ac-
count. Pet. App. 82a. The Court is rightly disinclined
to review cases in which reversal will not affect the ac-
tual controversy between the parties, and it should not
make an exception here.

Additionally, the Federal Circuit’s settled require-
ment that a putative co-inventor must adduce clear and
convincing evidence of inventorship in order to prevail
under 35 U.S.C. § 256 is correct. The statute simply
codified preexisting common law on the matter, which
Congress has never abrogated. Regardless of the out-
come in 742, there is no reason to reconsider the stan-
dard of proof in correction-of-inventorship cases—an
issue on which the Court has previously denied certio-
rari.

14

A. This Case Is An Unsuitable Vehicle Because
Reversal On The Question Presented Cannot
Alter The Outcome

Although the clear-and-convincing-evidence stan-
dard was invoked below to reinforce Vanderbilt’s fail-
ure to support its theory with evidence, the courts be-
low could and—based on their express statements—
would have reached the very same result under a pre-
ponderance standard. As the district court and the
court of appeals majority recognized, Vanderbilt’s the-
ory was at most “equally plausible” when compared to
the account [COS supported with evidence. Pet. App.
23a, 82a. It is settled—-and Vanderbilt does not dis-
pute—that “when the evidence is evenly balanced, the
[burdened party] must lose.” Dnrector, Office of Work-
ers’ Compensation Programs v. Greenwich Collieries,
512 U.S. 267, 281 (1994); see also Gonzales v. O Centro
Espirita Beneficente Uniao do Vegetal, 546 U.S. 418,
428 (2006) (government failed to carry its burden where
the evidence was “in equipoise”’); Concrete Pipe &
Prods. of Cal., Inc. v. Construction Laborers Pension
Trust for S. Cal., 508 U.S. 602, 622 (1993) (preponder-
ance-of-the-evidence standard requires “the trier of
fact to believe that the existence of a fact is more prob-
able than its nonexistence before [it] may find in favor
of the party who has the burden” (emphasis added; in-
ternal quotation marks omitted)).'

' Vanderbilt does not dispute the proposition that, even under
a preponderance standard, it would still bear the burden of proof
as the party seeking to change the status quo. See, e.g., Schaffer
ex rel. Schaffer v. Weast, 546 U.S. 49, 57-58 (2005) (“Absent some
reason to believe that Congress intended otherwise, ... the burden
of persuasion les where it usually falls, upon the party seeking
relief.”); 1 Mueller & Kirkpatrick, Federal Evidence § 3.1, at 104

15

This Court generally does not grant certiorari to
resolve legal issues that will not affect the outcome of
the case in which they arise. See, e.g., Gressman et al.,
Supreme Court Practice § 4.4(f), at 248 (9th ed. 2007)
(citing Sommerville v. United States, 376 U.S. 909
(1964)).* That practice is sound, as the fact that the de-
cision below ultimately did not turn on the issue pre-
sented raises the question whether the issue is disposi-
tive in any case, or at least arises sufficiently fre-
quently to merit this Court’s intervention.

Although Vanderbilt cites the number of amicus
briefs supporting the petition in 747 (Supp. Br. 2), it is
notable that not one amicus supported Vanderbilt’s pe-
tition here, nor did any of the 747 briefs suggest that the
Court should alter the longstanding requirement of
clear and convincing evidence in correction-of-
inventorship cases. Indeed, a Section 256 plaintiff must
corroborate his or her own testimony with objective
evidence—a common-law requirement of proof that
Vanderbilt accepts as proper under the statute, while
recognizing that it is “unique[]” to the correction-of-
inventorship context. Pet. 20. Yet the independent
corroboration requirement in correction-of
inventorship cases is closely linked to the requirement

(3d ed. 2007) (“Perhaps the broadest and most accepted idea is that
the person who seeks court action should justify the request,
which means that the plaintiffs bear the burdens on the elements
in their claims.”).

In Sommerville, the circuit panel was divided as to whether
liability was governed by state or federal law, and the courts of
appeals were similarly divided, but the disagreement was theo-
retical because the defendant would have been liable under either
approach. United States v. Sommerville, 324 F.2d 712, 714, 717
n.16 (3d Cir. 1963); see also id. at 720 (Steel, J., concurring).

16

of clear and convincing evidence. See, e.g., The Barbed
Wire Patent, 143 U.S. 275, 284 (1892) (holding that tes-
timony in patent cases is often “unsatisfactory” and re-
quiring proof that is “clear, satisfactory, and beyond a
reasonable doubt”); Deering v. Winona Harvester
Works, 155 U.S. 286, 300, 301 (1894) (“grave suspicion”
regarding testimony requires “evidence so cogent as to
leave no reasonable doubt in the mind of the court that
the transaction occurred substantially as stated”); T’ro-
van, Ltd. v. Sokymat SA, 299 F.3d 1292, 1802 (Fed. Cir.
2002) (“To meet the clear and convincing burden of
proof, alleged co-inventors must prove their contribu

tion to the conception with more than their own testi-
mony|[.]”); Price v. Symsek, 988 F.2d 1187, 1194 (Fed.
Cir. 1993) (claims to priority or derivation are “re

garded with skepticism,” so that “without some type of
corroborating evidence, an alleged inventor’s testimony
cannot satisfy the ‘clear and convincing evidence’ stan-
dard”). Here, of course, Vanderbilt provided no evi-
dence, let alone corroboration, of its theory that Dr.
Daugan’s invention of tadalafil was somehow influenced
by the Vanderbilt professors’ work with the IBMX ana-
log.

’ Vanderbilt states in a footnote that documentary evidence
corroborated the Vanderbilt professors’ discovery of the 1IBMX
analog. Pet. 21 n.5. But the patents at issue do not claim the
IBMX analog; rather, they claim tadalafil and other beta-carboline
compounds. As the courts below held, no direct evidence corrobo-
rates Vanderbilt’s speculation that its professors had any role
whatsoever in Dr. Daugan’s conception of the claimed beta-
carboline compounds. Pet. App. 17a. Vanderbilt’s failure to pro-
vide corroboration for its claims of co-inventorship provides an
independent basis for affirmance, further counseling against a
grant of review.

17

To be sure, the opinions below framed Vanderbilt’s
failure of proof in terms of a lack of “clear and convince
ing evidence” (Pet. App. 23a, 82a n.53), but that is un
derstandable in light of the precedent that bound both
courts. E.g., Hess v. Advanced Cardiovascular Sys.,
Inc., 106 F.3d 976, 979-980 (Fed. Cir. 1997). Neverthe
less, the finding that the evidence regarding the identi-
fication of GR30040x was in equipoise would manifestly
compel the same conclusion under a preponderance
standard.

Vanderbilt has precious little to say about the ef-
fect of the finding that its theory was only “equally
plausible” compared to ICOS’s account (Pet. App.
82a)—other than to contend that the district court’s
finding was error, supposedly because the court failed
to consider certain evidence (Pet. 10). But the court of
appeals implicitly rejected that argument when it com-
plimented the district court for its “thorough review of
all of the evidence.” Jd. 18a; see also id. 23a (citing the
district court’s “careful review of the evidence”).
Whether the district court did or did not consider par
ticular evidence—and whether the court of appeals cor
rectly found no error—is a case-specific factual deter
mination that does not warrant this Court’s review.
See S. Ct. R. 10 (certiorari is “rarely granted” when the
petition asserts “erroneous factual findings”); United
States v. Johnston, 268 U.S. 220, 227 (1925) (Holmes, J.)
(“We do not grant a certiorari to review evidence and
discuss specific facts.”). Certiorari is particularly un-
warranted where, as here, “the findings of fact made by
the district court receive the concurrence of the court
of appeals.” Gressman, § 4.14, at 271; see also Berenyt
v. strict Dir., INS, 385 U.S. 680, 635 (1967) (following
the “Court’s repeated pronouncements” against re-
viewing factual findings that were “reached by the Dis-

1s

trict Judge and accepted by the Court of Appeals”);
Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 336
U.S. 271, 275 (1949) (“A court of law, such as this Court
is, rather than a court for correction of errors in fact
finding, cannot undertake to review concurrent findings
of fact by two courts below in the absence of a very ob-
vious and exceptional showing of error.”).

Vanderbilt also claims that the district court “found
that Vanderbilt’s scientists contributed to the process
through which Dr. Daugan invented the compounds.”
Pet. 11 (emphasis added) (citing Pet. App. 80a). But a
contribution to the “inventive process” (Pet. App. 80a)
is not the same as a contribution to the conception of
the invention itself. See, e.g., Ethicon, Inc. v. U.S. Sur-
gical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998) (“Be-
cause conception is the touchstone of inventorship, each
joint inventor must generally contribute to the concep-
tion of the invention.” (alteration and internal quotation
marks omitted)). The district court accordingly cited a
case that expressly distinguished between significant
“contributions to conception” on the one hand and “pro-
saic contributions to the inventive process that do not
render the contributor a co-inventor” on the other. Ali
Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1359 (Fed.
Cir. 2004) (emphasis added) (cited at Pet. App. 80a).
The court specifically ruled that the Vanderbilt scien
tists’ contributions to Dr. Daugan’s “inventive process,”
if any, were of the second “prosaic” kind. Pet. App.
80a. Indeed, the parties agreed that Dr. Daugan, and
Dr. Daugan alone, conceived tadalafil and the other
claimed compounds. /d. 23a.

Moreover, as the court of appeals correctly ruled,
the district court’s ultimate finding, reviewing the evi-
dence in full, was that even Vanderbilt’s theory as to
the identification of GR30040x—which was at most a

19

“prosaic” step in Dr. Daugan’s “inventive process,” not
itself an inventive contribution—was itself no more
than “equally plausible.” Pet. App. 23a, 82a. The panel
majority ruled that the principal finding that the par-
ties’ accounts were “equally plausible” compelled a find-
ing that Vanderbilt failed to carry its burden—a de-
termination that would stand under a preponderance
test as well. Vanderbilt may well disagree with that
view, but the interpretation of a particular trial court
opinion in a particular case does not warrant this
Court’s intervention.

Vanderbilt has no other path to relief in this case.
The panel was unanimous—and Vanderbilt does not
seriously dispute—that there was no evidence (let
alone a preponderance) that the Vanderbilt professors
collaborated with Dr. Daugan himself, which would
have required an “open line of communication during ...
[the named inventor’s] inventive efforts,” Cook Biotech
Inc. v. ACell, Inc., 460 F.3d 1365, 1373 (Fed. Cir. 2006)
(internal quotation marks omitted), as well as “some
element of joint behavior.” Kimberly-Clark Corp. v.
Procter & Gamble Distrib. Co., 973 F.2d 911, 917 (Fed.
Cir. 1992) (“Individuals cannot be joint inventors if they
are completely ignorant of what each other has
done[.]”). As the court of appeals noted, there was no
evidence of any collaboration here. Pet. App. 16a-19a;
see also id. 26a (Dyk, J., concurring in part and dissent-
ing in part) (agreeing with panel majority in upholding
the district court’s finding that Dr. Daugan “did not
himself directly utilize” the Vanderbilt professors’
work). And Vanderbilt does not dispute that disclosure
to a company like Glaxo is insufficient to establish dis-
closure to an individual inventor. See Beall v. Ormsby,
154 F.2d 663, 665-666 (C.C.P.A. 1946).

20

Thus, Vanderbilt’s only route to success was to
prove (1) that Dr. Labaudiniére searched for and found
GR30040x based on his knowledge of Vanderbilt’s
IBMX analog and (2) that the identification of
GR30040x was in fact an inventive (and not a “prosaic’’)
contribution to the conception of tadalafil. But as the
court of appeals found, Vanderbilt’s case failed on the
first point. There was “no clear error in the district
court’s factual findings underpinning its determination
regarding Glaxo’s identification of GR380040x” (Pet.
App. 18a), given Vanderbilt’s failure to offer anything
more than attorney argument to support its claim in
the face of “direct evidence supporting Dr. La-
baudiniere’s claim to sole identification of GR30040x”
(id. 17a). Even viewing ICOS’s evidence with skepti-
cism, the district court found that Vanderbilt’s case did
not surpass “equall]” plausibility. Jd. 82a. And on the
key question whether the Vanderbilt scientists “com-
municated to Glaxo a compound of the general struc-
ture of [the compounds! of the patents at issue,” Van-
derbilt’s presentation was “devoid of evidence.” 7d.
79a. Thus, Vanderbilt’s claim was properly rejected no
matter what standard of proof applied.

As is discussed in the following section, the Court
should not reassess the settled standard of proof appli-
cable in correction-of-inventorship cases under Section
256. But even if the Court were interested in embark-
ing on such a venture, this case is not a suitable vehicle
for it. Merits review in this case would be a moot court
that would unnecessarily squander Court and party re-
sources. If the issue is as important as Vanderbilt in-

21

sists it is, the Court can await a case in which it might
6 4
actually make a difference.

B. Even If This Case Were A Suitable Vehicle,
The Clear-And-Convincing-Evidence Standard
For Correction-Of-Inventorship Claims Would
Not Merit Review

Even if Vanderbilt’s Section 256 claim could suc
ceed under a preponderance standard—and it cannot—
the Federal Circuit’s decades-long jurisprudence that
such claims require clear and convincing evidence is
correct and should not be upset. The Court should
therefore decline to review the issue, just as it has be-
fore. Pet. for Cert. 12, D.S. Brown Co. v. Acme High-
way Prods. Corp., No. 70-1140 (U.S. Dec. 21, 1970) (con-
tending that the court of appeals “erred ... in its ruling
that joint inventorship must be proven by clear and
convincing evidence”), cert. denied, 401 U.S. 956 (1971).

Vanderbilt’s primary argument for certiorari in
this case is that claims under Section 256 are exactly
the same as all other civil claims. Pet. 21. But Section
256 was not enacted in a vacuum. Rather, it was part of

* Vanderbilt is wrong to suggest (Pet. 22-23) that an error re-
garding the standard of proof can never be harmless. See, e.g.,
Bowoto v. Chevron Corp., 621 F.3d 1116, 1124 (9th Cir. 2010) (af-
firming where “any difference in the burden of proof’ would be
“immaterial under the circumstances of this case”). Indeed, courts
of appeals have affirmed even where the district court has placed
the burden on the wrong party. E.g., Barth v. Gelb, 2 F.3d 1180,
1189 (D.C. Cir. 1993) (“Viewing the evidence through the lens of
those findings, we conclude that it was not so closely balanced that
the court’s error in assigning the burden of persuasion to Mr.
Barth would have affected the outcome.”); Cates v. Morgan Port-
able Bldg. Corp., 780 F.2d 683, 688 (7th Cir. 1985) (“The judge’s
error about who had the burden of proof was harmless.”).

99
rs

the 1952 Patent Act, which-—among other things—-
codified several preexisting patent law doctrines. F.g.,
Lutz, The New 1952 Patent Statute, 35 J. Pat. Off. Soc’y
155, 156 (1953) (“Congress ... codified some doctrines of
patent law that were developed in the courts by ‘com-
mon law’ processes.”). The requirement of clear and
convincing evidence predated the 1952 Act by at least
three years. See Pointer v. Six Wheel Corp., 177 F.2d
1538, 157 (9th Cir. 1949) (“{I]t must appear by clear and
convincing proof that the two inventors collaborated in
evolving the patented device.”). Congress is presumed
to legislate on the background of that doctrine—a prin-
ciple Vanderbilt does not appear to contest with re-
spect to the requirement of independent corroboration
of inventorship evidence. Pet. 20-21; see Abwelhawa v.
United States, 129 S. Ct. 2102, 2106 (2009) (“legislatures
act with case law in mind,” so that Congress is pre-
sumed to be familiar with “traditional judicial” ap-
proaches); Beck v. Prupis, 529 U.S. 494, 501 (2000)
(Congress “presumably knows and adopts the cluster of
ideas that were attached” to statutory terms, so that
the “absence of contrary direction may be taken as sat-
isfaction with widely accepted definitions, not as a de-
parture from them” (internal quotation marks omit-
ted)); North Star Steel Co. v. Thomas, 515 U.S. 29, 34
(1995) (“[I]t is not only appropriate but also realistic to
presume that Congress was thoroughly familiar with
[our] precedents ... and that it expect[s] its enactments
to be interpreted in conformity with them.” (quoting
Cannon v. University of Chi., 441 U.S. 677, 699
(1979)).°

> Accord, e.g., Merck & Co. v. Reynolds, 130 8. Ct. 1784, 1795
(2010) (citing cases); Miles v. Apex Marine Corp., 498 U.S. 19, 32

23

Decisions in several circuits have articulated the
clear-and-convincing standard under the 1952 Act,° yet
Congress has never sought to alter that settled re-
quirement, despite remaining “free to alter what
[courts] have done.’”” Watson v. United States, 552 U.S.
74, 82 (2007). In 1984, Congress amended the definition
of a joint inventor in Section 116, expressly referencing
lower court decisions. Pet. App. 10a (noting that the
1984 amendments codified the principles of Monsanto
Co. v. Kamp, 269 F. Supp. 818 (D.D.C. 1967)). Those
amendments made it easier to become a joint inventor,
by recognizing for example joint inventors who did not
physically work together, but Congress elected not to
relax the uniformly-applied standard of proof in correc-
tion-of-inventorship cases. “The responsibility for
changing [settled law] rests with Congress,” Festo
Corp. v. Shoketsu. Kinzoku Kogyo Kabushiki Co., 5385

(1990) (Congress “must have intended to incorporate” the estab-
lished judicial “gloss” because “Congress is aware of existing law
when it passes legislation”); Goodyear Atomic Corp. v. Miller, 486
U.S. 174, 184-185 (1988) (“We generally presume that Congress is
knowledgeable about existing law pertinent to the legislation it
enacts.”); T.1.M.E. Inc. v. United States, 359 U.S. 464, 474 (1959)
(Supreme Court “cannot assume [Congress] was unaware” of a
common law decision relevant to its establishment of a statutory
scheme).

E..g., Hess, 106 F.3d at 980; Acme Highway Prods. Corp. v.
D.S. Brown Co., 431 F.2d 1074, 1083 (6th Cir. 1970) (“[I]t has been
well established that joint inventorship must be proven by clear
and convincing evidence.”); Garrett Corp. v. United States, 422
F.2d 874, 880 (Ct. Cl. 1970) (“The burden of showing misjoinder or
nonjoinder of inventors is a heavy one and must be proved by clear
and convincing evidence”); see also Levin v. Septodont Inc., 34 F.
App’x 65, 70 (4th Cir. 2002) (party seeking to correct patent’s list
of inventors “must prove that claim by clear and convincing evi-
dence”).

U.S. 722, 739 (2002), and Congress has declined to make
the change that Vanderbilt seeks.’

In its supplemental brief, Vanderbilt belatedly at-
tempts to liken its case te 242, which involves the appli
cability of a clear-and-convincing-evidence standard in
invalidity challenges based on prior art not placed be-
fore the Patent Office. See Pet. for Cert. i, Microsoft
Corp. v. 741 Ltd. P’ship, No. 10-290 (U.S. Aug. 27, 2016).
But as Vanderbilt recognizes, eleven amicus briefs
supported Microsoft’s petition for certiorari, emphasiz-
ing the claimed frequency with which the standard of
proof may be dispositive in invalidity cases. By con-
trast, not one amicus has supported Vanderbilt’s peti-
tion in this case or even suggested that it raises a ques-
tion of significant importance. As shown in the preced-
ing section, even this case does not turn on the issue."

’ Clear and convincing evidence is additionally appropriate
because claims under 35 U.S.C. § 256 are equitable in nature,
Shum v. Intel Corp., 499 F.3d 1272, 1277 (Fed. Cir. 2007), and
plaintiffs seeking equitable relief have historically had to prove
factual contentions by clear and convincing evidence. See 2
McCormick on Evidence § 340 & n.15, at 488 (6th ed. 2006) (citing
cases). In fact, one authoritative commentator has questioned
whether Section 256 creates an independent cause of action at all,
given that the statutory language does not purport to do so. See 1
Chisum on Patents § 2.04(7], at 2-142 (Nov. 2007) (finding the exis-
tence of federal jurisdiction under Section 256 “highly question-
able, both in terms of the statutory language of Section 256 and of
policy”).

; Although the use of a clear-and-convincing standard to
prove co-inventorship has been linked to the presumption of valid-
ity, see, e.g., Stern v. Trustees of Columbia Univ. in City of N.Y.,
434 F.3d 1375, 1877 (Fed. Cir. 2006), the standard is supported by
other “important policy considerations”—most notably countering
the temptation for aspiring co-inventors to reconstruct their prior

No matter how 242 is resolved, the outcome in this
case will be the same, because Vanderbilt failed to
prove that its professors are entitled to be named co-
inventors by even a preponderance, and clear and con-
vincing evidence is 4 longstanding common law stan-
dard that Congress has implicitly approved and never
disturbed. There is no need, and certainly no pressing
need, for this Court to review Vanderbilt’s first ques-
tion presented.

Il. AN APPELLATE COURT’S AUTHORITY TO AFFIRM ON
AN ALTERNATIVE GROUND SUPPORTED BY THE RE-
CORD IS SETTLED, PARTICULARLY WHERE THE DISs-
TRICT COURT HAS MADE THE NECESSARY SUPPORT-
ING FINDINGS

Vanderbilt’s second question presented is almost
an afterthought, and understandably so: it attempts to
discard a settled doctrine that this Court and every cir-
cuit have articulated countless times, namely that an
appellate court “may affirm on any ground that the law
and the record permit.” Thigpen v. Roberts, 468 U.S.
27, 30 (1984); see also, e.g., Jaffke v. Dunham, 352 U.S.
280, 281 (1957) (per curiam) (“A successful party in the

state of mind and inflate their contributions, “particularly where,
as here, the patent has been outstanding for a considerable time
and the patented device has been successful.” Hess, 106 F.3d at
980 (citing Amax Fly Ash Corp. v. United States, 514 F.2d 1041,
1047 (Ct. Cl. 1975)). These considerations have particular force in
this case, where scientists came forward years after the patents
issued to assert—without evidence—joint inventorship of a highly
successful cornmercial product.

26

District Court may sustain its judgment on any ground
. "9 -
that finds support in the record.”).

Here, the Federal Circuit’s affirmance was all the
more justified because it rested on a basis that the dis-
trict court itself accepted. As the panel majority ex
plained, the district court “did not rest its opinion
solely” on the interpretation of the law of inventorship
that the Federal Circuit held erroneous. Pet. App. 23a.
Rather, the district court—-like the Federal Circuit—-
separately ruled that Vanderbilt failed to carry its bur-
den to show that its professors contributed to the con-
ception of the claimed compounds, because its specula-
tive theory of events regarding the identification of the
unclaimed GR30040x compound was only “equally plau-
sible” when compared to ICOS’s evidence. /d. 23a, 82a.
That finding sufficed to support the judgment, and the
Federal Circuit was fully entitled to affirm on that ba-
sis notwithstanding disagreeing with the district
court’s alternative ground of decision. See, e.g., Morgan
Stanley Capital Group Inc. v. Public Util. Dist. No. 1
of Snohomish County, 128 S. Ct. 2733, 2749 (2008) (af-
firming “on alternative grounds,” despite “significant
disagreement” with the lower court); Sregert v. Gilley,

” Accord Carreras Vv. Sajo, Garcia & Partners, 596 F.3d 25, 36
(Ist Cir. 2010); Shelton v. Kennedy Funding, Inc., 622 F.3d 943,
952 (8th Cir. 2010); Friends of Tims Ford v. TVA, 585 F.3d 955, 964
n.2 (6th Cir. 2009); Brooks v. Ross, 578 F.3d 574, 578 (7th Cir.
2009); Berquist v. Washington Mut. Bank, 500 F.3d 344, 349 (5th
Cir. 2007); United States v. Smith, 395 F.2d 516, 519 (4th Cir.
2005); Davis v. Roberts, 425 F.3d 830, 834 (10th Cir. 2005); Green v.
CSX Transp., Inc., 414 F.3d 758, 765 (7th Cir. 2005); Koziara v.
City of Casselberry, 392 F.3d 13802, 1306 n.2 (11th Cir. 2004);
ACEquip Ltd. v. American Eng’g Corp., 315 F.3d 151, 155 (2d Cir.
2003); Serrano v. Francis, 345 F.3d 1071, 1076-1077 (9th Cir. 2003);
Tourscher v. McCullough, 184 F.3d 236, 240 (8d Cir. 1999).

27

500 U.S. 226, 234-235 (1991) (affirming even though the
court of appeals misread precedent, because “[b]y a dif-
ferent line of reasoning, we reach the same conclu-
sion’).

The alternative ground of decision, which is sup-
ported by the evidence and findings of record, amply
distinguishes this case from Pullman-Standard v.
Swint, 456 U.S. 273 (1982). As Vanderbilt acknow]-
edges, the district court in Pullman-Standard had
failed to make findings on a matter that the Fifth Cir-
cuit held was legally relevant (a union’s intent in an
employment discrimination suit). Rather than remand
to allow the district court “to make the missing find-
ings,” the Fifth Circuit made those findings itself, set
aside the district court’s factual finding of no discrimi-
natory intent, and reversed the district court’s decision.
Id. at 275, 282-284, 291. This Court disapproved that
practice because Federal Rule of Civil Procedure 52(a)
“requires that findings of fact not be set aside unless
clearly erroneous.” /d. at 287; see also id. at 293. While
a remand is indeed preferable where, as in Pullman-
Swint and the other cases Vanderbilt cites, the court of
appeals’ reversal on a legal issue implicates factual mat-
ters on which no finding was made," those rulings do

10 “~ °O eT
See Impax Labs., Inc. v. Aventis Pharms. Inc., 468 F.3d

1366, 1383 (Fed. Cir. 2006) (remanding for a determination that
had “not yet been done,” because “the district court stopped its
analysis”); 7'rovan, 299 F.3d at 1310 (remanding because the dis-
trict court “did not completely address” claim construction issues);
W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1547
(Fed. Cir. 1983) (“the invention set forth in each claim was not in
each instance considered as a whole,” and “the references were not
assessed in their entireties”); see also United States v. Hasan, 609
F.3d 1121, 1129 (10th Cir. 2010) (remanding where district court

28

not speak to this case, where the court of appeals af-
firmed on an alternative ground that remains unaf-
fected by the legal ruling.

Here, the Federal Circuit did not make any new
findings, set aside findings made by the district court,
or reverse the district court’s judgment. Rather, it af-
firmed on a ground that the trial court itself articulated
and supported with its finding that Vanderbilt failed to
carry its burden of proof (even by a preponderance).
Thus, this is not a case in which the court of appeals
“attempt{ed] to reach its own factual findings” or
“usurpled] ... a trial court’s role in weighing evidence
against the appropriate legal standard.” Pet. 25. Ra-
ther, the district court’s finding of evidentiary equi-
poise was independent of its approach to inventorship
law, and the panel majority affirmed that finding as
based on “a careful review of the evidence.” Pet. App.
23a. That finding compelled affirmance, even under
Vanderbilt’s desired standard of proof."

failed to undertake the first step in a “two-step, sequential in-
quiry’”).

Notably, three of the four cases Vanderbilt cites as applying
the correct rule are from the Federal Circuit, which suggests ei-
ther that Vanderbilt’s supposed conflict does not exist or that it
may be resolved by further percolation within the Federal Circuit.

'' Since Vanderbilt’s second question is presented independ-
ently of its first, it is properly considered on the basis that the
Federal Circuit and district court correctly applied the clear-and-
convincing-evidence standard. But even if a preponderance stan-
dard applied, the district court’s findings still compel the same re-
sult. See supra Part I.A.

2

CONCLUSION
The petition for a writ of certiorari should be de

nied.

Respectfully submitted

‘THOMAS IL. ROSS
Counsel of Record
KEVIN M. FLOWERS
MATTHEW C. NIELSEN
MARSHALL GERSTEIN
30RUN LLP
233 South Wacker Drive
6300 Willis Tower
Chicago, IL 60606
(312) 474-6300
tross@marshallip.com

DECEMBER 2010

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386017_2525%3A2. Public record. Not legal advice.