Amicus Curiae Brief — Atlantic Richfield Co. v. Union Oil Co. of California

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No. 00-249

In The =| SEP 1 4 2000

Supreme Court of the United States

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ATLANTIC RICHFIELD COMPANY, et. al.,

Petitioners,

V.

UNION OIL COMPANY OF CALIFORNIA,

Respondent.

+

On Petition For Writ Of Certiorari

To The United States Court Of Appeals

For The Federal Circuit

s

AMICI CURIAE BRIEF OF THE STATES OF

ALABAMA, ARIZONA, ARKANSAS, CALIFORNIA,

COLORADO, DELAWARE, GEORGIA, ILLINOIS,

INDIANA, KANSAS, KENTUCKY, MAINE,

MASSACHUSETTS, MICHIGAN, MINNESOTA,

MISSOURI, NEVADA, NEW HAMPSHIRE,

NEW JERSEY, NEW MEXICO, NEW YORK, NORTH

CAROLINA, NORTH DAKOTA, OHIO, OKLAHOMA,

PENNSYLVANIA, SOUTH CAROLINA, SOUTH DAKOTA,

TEXAS, UTAH, VIRGINIA, WASHINGTON,

WEST VIRGINIA, AND WISCONSIN AND THE

DISTRICT OF COLUMBIA IN SUPPORT OF

PETITION FOR WRIT OF CERTIORARI

Sf

Britt Lockyer

Attorney General of the State

of California

RicHARD M. FRANK

Chief Assistant Attorney

General

Mary E. HACKENBRACHT

THOMAS GREENE

Senior Assistant Attorneys

General

JouHN DonnHorr

Marc N. MELNick

(Counsel of Record)

Deputy Attorneys General

1515 Clay Street, 20th Floor

Oakland, California 94612

(510) 622-2133

[Additional Counsel Listed On Inside Front Cover]

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

OR CALL COLLECT (402) 342-2831

Bit. Pryor

Attorney General of the

State of Alabama

JANET NAPOLITANO

Attorney General of the

State of Arizona

Mark Pryor

Attorney General of the

State of Arkansas

KEN SALAZAR

Attorney General of the

State of Colorado

M. JANE Brapy

Attorney General of the

State of Delaware

THurBertT E. BAKER

Attorney General of the

State of Georgia

James E. Ryan |

Attorney General of the

State of Illinois

KAREN M. FREEMAN-WILSON

Attorney General of the

State of Indiana

CARLA STOVALL

Attorney General of the

State of Kansas

AvBert B. CHANDLER III

Attorney General of the

State of Kentucky

ANDREW KETTERER

Attorney General of the

State of Maine

THomas F. REeiLiy

Attorney General of the

Commonwealth of

Massachusetts

JENNIFER M. GRANHOLM

Attorney General of the

State of Michigan

Mike HatcH

Attorney General of the

State of Minnesota

JEREMIAH W. (Jay) Nixon

Attorney General of the

State of Missouri

FRANKIE Sue Det Papa

Attorney General of the

State of Nevada

Puiuie T. MCLAUGHLIN

Attorney General of the

State of New Hampshire

JOHN J. FARMER, JR.

Attorney General of the

State of New Jersey

Patricia A. MAprRID

Attorney General of the

State of New Mexico

Eviot SpItzeER

Attorney General of the

State of New York

MIcHAEL F. EASLEY

Attorney General of the

State of North Carolina

Heipr Herrkamp

Attorney General of the

State of North Dakota

Betty D. MONTGOMERY

Attorney General of the

State of Ohio

W.A. Drew EDMONDSON

Attorney General of the

State of Oklahoma

D. MicHaet. FisHer

Attorney General of the

Commonwealth of

Pennsylvania

CHARLIE CONDON

Attorney General of the

State of South Carolina

Mark BARNETT

Attorney General of the

State of South Dakota

JOHN CoRNYN

Attorney General of the

State of Texas

JAN GRAHAM

Attorney General of the

State of Utah

Mark L. Eartey

Attorney General of the

Commonwealth of

Virginia

CHRISTINE O. GREGOIRE

Attorney General of the

State of Washington

Darrett V. McGraw, Jr.

Attorney General of the

State of West Virginia

James E. Doyte

Attorney General of the

State of Wisconsin

Roserr R. Ricssy

Corporation Counsel of

the District of Columbia

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QUESTIONS PRESENTED

1. Whether the federal courts should uphold the

validity of a patent when the patent’s sole value comes

from its resemblance to state regulatory requirements,

rather than from the discovery of an innovative technol-

ogy, and the patent is contrary to the public interest.

2. Whether a patent is valid when the patent's origi-

nal claims include one trillion different combinations, and

its claims are thereafter changed to claims which resem-

ble regulatory requirements.

3. Whether a patent applicant should be required to

fully and completely disclose all material information to

the Patent and Trademark Office.

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TABLE OF CONTENTS

Page

OO 8 OR eo OS 0 |

po Be a ii

pp Ry |. iii

Speemeeee Ge FUeIG? CEREAL... .. 22. cccsecncscces 1

REASONS FOR GRANTING THE PETITION....... 5

I. THE COURT SHOULD REQUIRE THE FED-

ERAL COURTS TO EVALUATE PATENTS IN

LIGHT OF THE PUBLIC INTEREST........... 2

II. THE COURT SHOULD REQUIRE A STRICT

CONSTRUCTION OF THE PATENT LAW’S

WRITTEN DESCRIPTION REQUIREMENT IN

Ce Cee HA BERGE es sk ccc rscdvenes veces 7

Ill. THE COURT SHOULD ALSO ENSURE THAT

PATENT APPLICANTS MAKE A FULL AND

COMPLETE DISCLOSURE TO THE PATENT

AND TRADEMARK OFFICE ..............500. 10

RRIF char ccev cays roe bi neces cavasceeeees 13

iil

TABLE OF AUTHORITIES

Page

CASES

Beckman Instruments, Inc. v. Chemtronics, Inc., 439

F.2d 1369 (5th Cir. 1970), cert. denied, 400 U.S.

Sie eae CURR c ae ak ave ee Co ek oe ae oe es 6

Feist Publications, Inc. v. Rural Tel. Serv. Co., 499

ee SE SED 6 pees dene eet be ae o

Fujikawa v. Wattanasin, 93 F.3d 1559 (Fed. Cir.

i Oe ee ee Pe Pee ee Mena ee ae) 8

Graham v. John Deere Co., 383 U.S. 1 (1966)........... 5

Hewlett-Packard Co. v. Bausch & Lomb, Inc., 882 F.2d

1556 (Fed. Cir. 1989), cert. denied, 493 U.S. 1076

GRP AS owen 05d Se ee eee ae ree 10

Kingsland v. Dorsey, 338 U.S. 318 (1949) ............. 10

Nobelpharma AB v. Implant Innovations, Inc., 141

F.3d 1059 (Fed. Cir. 1998), cert. denied, 525 U.S.

i Ee Pre Wc Tene ee een OLN PA Pt yen an way A 10

Precision Instrument Mfg. Co. v. Automotive Mainte-

nance Mach. Co., 324 U.S. 806 (1945) .............. 10

Rengo Co. v. Molins Mach. Co., 657 F.2d 535 (3rd

Cis. 1961), cert. denied, 454. US. 1065... oo 5. ceccocxs 8

Sony Corp. of Am. v. Universal City Studios, Inc., 464

SP RT GUM 5 cos SN Aaa EG Cede eee 5

U.S. v. Singer Mfg. Co., 374 U.S. 174 (1963)........... 6

Universal Oil Prods., Inc. v. Globe Oil & Ref. Co., 322

Sa te RR 5a Soc b RRR RA Oe ka pee aoe eee Leet 8

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

COW. See Gia AFM AEM s as sae res kee h inka ahewes 10

TABLE OF AUTHORITIES — Continued

Page

CONSTITUTIONAL PROVISIONS

Consr. art. 1, § §,-4 i.e ee ee 5

STATUTES AND REGULATIONS

United States Code, title 35

YY rd es BE i se eae ae 8

United States Code, title 42

De re ee I Oe 1

Bee 3, | ee re ore ee Pree ey oul z

© FC MENG SD ii once ices enekens eke keer erent. y

California Health & Safety Code

kre eer ery ere bee i Fas By 2

SEG. ok x ova cvpaeesaneheeeeune eterna 2

Code of Federal Regulations, title 40

Pe eee ers re i et gS he ee heh Je 1

Bk OS ere eRe ie ree re 2

65 Federal Register 16094 (Mar. 24, 2000) ............ z

California Code of Regulations, title 13

i REM EAs 6:55 004 ba A eKe RIO OEE EERE ee ee 2

OTHER MATERIALS

Alexei Barrionuevo, Exhausting Feud: A Patent

Fracas Pits Unocal Corp. Against Big U.S. Oil

Producers, WauL St. J., Aug. 17, 2000, at Al........ 3

Alexei Barrionuevo, Fears Over Gasoline Patents

May Buttress Prices, Wa.t St. J., May 1, 2000, at

TABLE OF AUTHORITIES - Continued

Page

Pam Belluck, In Gas Prices, Misery and Mystery,

N.Y. Times, June 14, 2000, at A18 .................. 3

Patents: Witnesses at Oversight Hearing Testify on

Continuing Issue of PTO Fee Diversion, BNA Pat-

ENT, TRADEMARK & CopyriGHt Law Dalry, Mar. 14,

NEES PR a rere ee ar ee eer 11

INTEREST OF AMICI CURIAE

Ordinarily; Atater are nant intarented dip dignites wvcar

the validity of patents. Nevertheless, these States are

concerned about this particular case because it raises

broad policy implications, beyond the rights of a few

private corporations.

The basis for our concerns is that the value of

Unocal’s patent derives solely from its similarity to the

complex requirements of California’s cleaner-burning

gasoline regulations. Unocal’s patent is not for a new

technology or a new chemical. Rather, the patent claims

various combinations of gasoline characteristics,

designed to resemble the regulatory requirements set by

California. Unocal has essentially sought to patent a state

regulatory requirement.

The States’ concerns fall into two categories. First, the

Federal Circuit’s decision potentially allows Unocal to

monopolize the retail gasoline market, and significantly

increase the price consumers pay for gasoline. Second,

Unocal’s prosecution of this patent distorted and abused

California’s administrative regulatory process, and pro-

vides a model for similar mischief in a variety of impor-

tant environmental and consumer protection contexts.

The States — unlike the oil companies who are parties -

are uniquely positioned to supply public law and policy

analysis on these issues of public concern.

The Clean Air Act allows the federal government to

regulate the composition of gasoline, in order to contro!

ozone, the primary constituent of smog across the Nation.

See 42 U.S.C. § 7545; 40 C.F.R. Part 80. This legislation

recognized that the composition of gasoline can greatly

inthuence the amount of ozone-torming pollutants in car

and truck emissions. The most recent iteration of gasoline

that meets these federal requirements is commonly called

tederal reformulated gasoline, or federal RFG. See 40

CER. §§ 80.40-.83.

The Clean Air Act also allows California to set more

stringent tuel specification standards, and it has done so.

See 42 U.S.C. § 7545(c)(4)(B); Cal. Health & Satety Code

§§ 43013, 43018; 13 Cal. Code Regs. §§ 2250-73. The gas-

oline that Calitornia allows to be sold within its bound-

aries is commonly called CaRFG, or CARB gas.

Calitornia’s “Phase 2” requirements were adopted in

1991, and the “Phase 2” technical requirements were

tinalized in 1994. Other States could also adopt advanced

tuel specification regulations, if those regulations were

necessary to reach air quality standards and the appropri-

ate approvals were obtained. See 42 U.S.C. § 7545(e)(4)(C).

See also 65 Fed. Reg. 16094, 16096-97 (Mar. 24, 2000)

(describing the areas, within many of the Amici States,

Where retormulated gasoline is required to be sold and

used).

In this case, Unocal’s inventors admitted that this

‘

patent was developed to “resemble” California’s fuel

specification regulations. Thus, the trier of fact deter-

mined that 29% of all of the gasoline sold in California,

tor the five months at issue at the trial, was within

Unocal’s patent. The trial court awarded damages — com-

puted at 5°/4 cents per gallon — of over $69,000,000, plus

interest, attorneys’ fees and costs. That amount was for

only the tive months at issue during the trial, and only

tor Calitornia. It remains to be seen what the complete -

and ongoing — effects of this patent will be. However,

they are sure to be considerable.

This case has serious implications beyond this one

particular patent, however, and beyond California. Unocal

has since obtained four other, similar patents. All were based

on the original patent application, and Unocal appears to

,

have designed these additional patents to “resemble” the

federal, nation-wide fuel specification regulations. See

Alexei Barrionuevo, Exhausting Feud: A Patent Fracas Pits

Unocal Corp. Against Big U.S. Oil Producers, Watt St. J.,

Aug. 17, 2000, at Al. No litigation has yet occurred on

these additional four patents, but the potential is there for

Unocal to control the entire Nation’s gasoline market,

increasing prices even further. The patents certainly have

increased uncertainty about the availability of gasoline,

and therefore have already indirectly increased consumer

prices. See Alexei Barrionuevo, Fears Over Gasoline Patents

May Buttress Prices, Wa. St. J., May 1, 2000, at A2; Pam

Belluck, In Gas Prices, Misery and Mystery, N.Y. Times, June

14, 2000, at Al8. As every consumer knows, retail gas-

oline prices have increased dramatically in the last two

years, with even higher temporary price spikes. Because

of these potentially widespread economic effects, this

case has important consequences for the Nation.

Even beyond the retail gasoline price consequences

of this patent, this case portends undeniable conflict

between the patent system and the States’ obligations to

protect their citizens. This is because Unocal’s patents

could provide it with a monopoly on a product which the

law requires consumers to use. In this case, California

adopted the strictest cleaner-burning gasoline require-

ments in the nation, in an effort to protect the health of its

citizens. California actually set standards tor the compo-

sition of gasoline to be sold within its borders. Unocal has

attempted, by this patent, to commandeer these regula-

tions - adopted for the benefit of all California residents —

tor its own profit motive. This places the State of Califor-

nia in the untenable position of effectively having to

choose between cleaning up the air and encouraging

increased competition in the gasoline market.

In many other arenas, in order to protect the health

and safety of their citizens, the States may feel compelled

to require the use of a particular product, or the use of a

product with particular characteristics. This could occur

in the context of environmental protection or consumer

safety regulation. States might wish to require particular

water quality control technology. States might wish to

require particular products to be sold in particular con-

tainers. States might wish to require drivers to use partic-

ular safety equipment. The patent system should not

allow opportunistic businesses to covertly create monop-

olies on these regulatory choices. Nor should it force

States considering these kinds of approaches — requiring

the use of a product developed through a state regulatory

process — to also risk unknowingly providing a monopoly

(and the accompanying windfall) to the first manufac-

turer of the legally-required product.

What makes this patent even more unconscionable is

that Unocal developed this patent while it was participat-

ing in a public-private partnership designed to assist in

the development of the regulations at issue. Unocal did

not develop its patent after the regulations were adopted,

as a consequence of a technology-forcing legal require-

ment. Nor did Unocal disclose the patent to the State of

California, so that the State could take the patent into

account in deciding whether to adopt the regulations.

Rather, Unocal kept the patent application, its amend-

ments, and the patent itself secret until after the regula-

tions were finalized — while Unocal was discussing, with its

competitors and the State of California, what form the Caltfor-

nia regulations should take. In this way, Unocal sought to

hijack and distort the state regulatory process.

The overarching question this case presents is

whether the Courts of the United States should allow the

patent system to be used in this manner, to distort and

plunder the States’ regulatory processes. Never before

has the Court addressed this exceedingly important ques-

tion.

REASONS FOR GRANTING THE PETITION

I. THE COURT SHOULD REQUIRE THE FEDERAL

COURTS TO EVALUATE PATENTS IN LIGHT OF

THE PUBLIC INTEREST

The explicit purpose of the Constitution’s Patent and

Copyright Clause is to “promote the Progress of Science

and useful Arts.” Const. art. I, § 8, cl. 8. Thus, patents are

granted to serve the public interest. See Feist Publications,

Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 349 (1991) (“The

primary objective of copyright is not to reward the labor

of authors, but ‘[t]o promote the Progress of Science and

the useful Arts.’ ”); Sony Corp. of Am. v. Universal City

Studios, Inc., 464 U.S. 417, 429 (1984) (“the limited grant is

a means by which an important public purpose may be

achieved”); Graham v. John Deere Co., 383 U.S. 1, 5-6 (1966)

(discussing that the federal patent power does not go

beyond the constitutional grant of power). “When there is

no novelty and the public parts with the monopoly grant

for no return, the public has been imposed upon and the

patent clause subverted.” U.S. v. Singer Mfg. Co., 374 US.

174, 199 (1963) (White, J., concurring). As one Court of

Appeals long ago stated, “the law does not allow the

granting of these valuable franchises to private individ-

uals, with consequent public detriment, unless there is a

concomitant public benefit.” Beckman Instruments, Inc. v.

Chemtronics, Inc., 439 F.2d 1369, 1371 (5th Cir. 1970), cert.

denied, 400 U.S. 956.

While we should encourage companies to pursue

innovation to meet consumer demands, or to meet

already-adopted technology-forcing environmental

requirements, that is not what occurred here. Unocal’s

amendment and substitution of patent claims simply

tracked the development of the California’s cleaner-burn-

ing gasoline regulations. As one of Unocal’s inventors

testified, “Some of [the claims] were narrowed at various

times to resemble the [California] regulations.” Moreover,

at the same time it was prosecuting this patent, Unocal

was lobbying before California’s administrative agency,

participating in an administrative process, intended for

the benefit of the general public, which would create

regulations Unocal could use to attempt to control the

California gasoline market. The actual value of this pat-

ent flows from the fact that it covers products required by

California’s cleaner-burning gasoline regulations, not the

patent's inventiveness. Unocal would have had to meet

these regulatory requirements to sell gasoline in Califor-

nia, regardless of whether it developed a patent. Uphold-

ing the validity of the patent just rewards Unocal’s

timing, secretiveness and audacity. It does not serve the

public interest.

Amazingly, the courts below ignore: the public inter-

est implications at play in this case. Those public policy

arguments fell on deaf ears at the trial court and at the

Federal Circuit. Nowhere does the decision below address

the requirement that the patent be in the public interest.

There simply is no discussion of the implications of this

decision. Instead, the lower courts focused exclusively on

the parties before them. This Court needs to remind the

federal courts that patent cases — especially cases like this

which have obvious consequences for ordinary, everyday

consumers — are not just a financial dispute between two

private corporations. Patent cases have an impact on the

public at large. Consistent with the Constitution’s Patent

and Copyright Clause, this Court should require the fed-

eral courts, in deciding the validity of patents, to evaluate

whether the patent is in the public interest. This case

provides a splendid opportunity to do so, because the

public interest weighs so clearly against the validity of

this patent.

II. THE COURT SHOULD REQUIRE A STRICT CON-

STRUCTION OF THE PATENT LAW’S WRITTEN

DESCRIPTION REQUIREMENT IN CASES SUCH

AS THIS

One of the legal issues in this case is whether

Unocal’s original patent application contained a

sufficiently adequate written description of its subse-

quently added claims. This issue is salient because

Unocal’s original patent application would have included

literally a trillion gasoline property combinations.

A patent application must include,

“a written description of the invention, and of

the manner and process of making and using it,

in such full, clear, concise, and exact terms as to

enable any person skilled in the art to which it

pertains, or with which it is most nearly con-

nected, to make and use the same, and shall set

forth the best mode contemplated by the inven-

tor of carrying out his invention.”

35 U.S.C. § 112. See also Universal Oil Prods., Inc. v. Globe

Oil & Ref. Co., 322 U.S. 471, 484 (1944) (“preciseness of

description is essential”). As one Court of Appeals

explained,

“Adequate description of the invention guards

against the inventor’s overreaching by insisting

that he recount his invention in such detail that

his future claims can be determined to be

encompassed within his original creation.”

Rengo Co. v. Molins Mach. Co., 657 F.2d 535, 551 (3rd Cir.

1981), cert. denied, 454 U.S. 1055. Without specific identi-

fication in the original application, “simply describing a

large genus of compounds is not sufficient to satisfy the

written description requirement as to particular species

or sub-genuses.” Fujikawa v. Wattanasin, 93 F.3d 1559,

1571 (Fed. Cir. 1996).

These Amici States believe that important public pol-

icy considerations warrant the strict construction of the

patent laws, including the written description require-

ment, in a case such as this. This patent covers products

mandated by government regulations developed during

the patent application process. Failure to strictly construe

the written description requirement will encourage com-

panies to file broad, preliminary and ill-defined patent

applications at the beginning of an administrative

rulemaking process, followed by substantial amendments

that conform more closely to the developing and ulti-

mately adopted regulatory requirements - exactly as

Unocal did in this case. Thus, a patent’s monopoly will be

achieved without disclosure to the rulemaking body

(since patent applications can be kept secret), obstructing

the agency’s ability to protect and advance the public

interest — again, exactly as Unocal did in this case. This is

simply bad public policy.

In this case, in assessing the written description

requirement, the Court of Appeals - over a vigorous

dissent — allowed Unocal’s written description because it

came reasonably close. The panel failed to assess the

connection between the California cleaner-burning gas-

oline regulations and Unocal’s patent. Granting certiorari

in this case provides this Court with the opportunity to

ensure that the written description requirement will be

vigorously enforced and strictly construed in cases

involving the public interest.

10

III. THE COURT SHOULD ALSO ENSURE THAT

PATENT APPLICANTS MAKE A FULL AND

COMPLETE DISCLOSURE TO THE PATENT

AND TRADEMARK OFFICE

While pursuing patents, applicants have an obliga-

tion to conduct themselves with ” ‘the highest degree of

candor and good faith.’ ”! Kingsland v. Dorsey, 338 U.S.

318, 319 (1949). “The far-reaching social and economic

consequences of a patent, therefore, give the public a

paramount interest in seeing that patent monopolies

spring from backgrounds free from fraud or other inequi-

table conduct and that such monopolies are kept within

their legitimate scope.” Precision Instrument Mfg. Co. v.

Automotive Maintenance Mach. Co., 324 U.S. 806, 816

(1945). See also Hewlett-Packard Co. v. Bausch & Lomb, Inc.,

882 F.2d 1556, 1563 (Fed. Cir. 1989), cert. denied, 493 U.S.

1076 (1990). Moreover, this Court has more recently

explained that if a patent applicant commits fraud on the

Patent and Trademark Office, the applicant may be liable

for antitrust violations. See Walker Process Equip., Inc. v.

Food Mach. & Chem. Corp., 382 U.S. 172, 177 (1965);

Nobelpharma AB v. Implant Innovations, Inc., 141 F.3d 1059,

1068-71 (Fed. Cir. 1998), cert. denied, 525 U.S. 876.

It is no secret that there has been an overwhelming

increase in the workload of the Patent and Trademark

1 We are cognizant that the question of inequitable conduct

is not squarely within the questions framed by the petition for

writ of certiorari. However, we believe the question of

inequitable conduct is inextricably linked to the question of

whether a patent is in the public interest.

11

Office. With the current technological revolution, touch-

ing on computers, biotechnology and other fields, com-

panies are filing an avalanche of patent applications. This

increased workload has had an overpowering impact on

the staff of the Patent and Trademark Office, and

increased public scrutiny on the appropriateness of grant-

ing some patents. See, e.g., Patents: Witnesses at Oversight

Hearing Testify on Continuing Issue of PTO Fee Diversion,

BNA Patent, TRADEMARK & CopyriGHTt Law Dalry, Mar. 14,

2000 (discussing increased workload of Patent and Trade-

mark Office and increased criticism of quality of patents

issued). This means that the courts need to be particularly

vigilant about the process by which patents — in secret —

are sought.

In this case, Unocal failed to disclose to the Patent

and Trademark Office the extent to which its patent grew

from and was dependent upon the outcome of Califor-

nia’s administrative regulatory proceedings. Unocal par-

ticipated in a government-industry partnership to

develop cleaner-burning gasoline. It knew that California

was developing stringent fuel specification regulations. It

modified its patent application to “resemble” those regu-

lations. Yet, Unocal’s disclosure to the Patent and Trade-

mark Office was vague and incomplete. The only

disclosure that Unocal made was to forward a newspaper

article discussing the adoption of California’s regulatory

standards. Unocal failed to explain the significance of

those regulations or indeed the very close connection

between the regulations and its patent. Unocal had a duty

to make a full and complete disclosure, and simply failed

to do so. Unocal should have provided the Patent and

Trademark Office this full and complete disclosure,

12

explaining that Unocal’s patent claims were amended to

resemble the California regulations, so that the Patent

and Trademark Office could reasonably make a deter-

mination of whether this patent was innovative and in

the public interest.

Patents are granted in the public interest, to promote

the public welfare. Consumer welfare is, of course, also

advanced by government-industry partnerships such as

that formed to combat air pollution. It was at best inequi-

table conduct for Unocal to work hand-in-glove with the

other participants in a state administrative process to

develop cleaner-burning gasoline, while at the same time

seeking to garner a monopoly from the fruits of that joint

endeavor, all the while hiding its true objective. If Unocal

had advised the Siate of California that it was seeking

this patent, California could have taken into account that

vital information in the administrative regulatory pro-

cess. Instead, Unocal essentially sought in secret to patent

the regulations which California adopted. A patent

gained by virtue of such conduct should be invalidated as

manifestly contrary to the public good.

¢

13

CONCLUSION

The Court should grant the petition for writ of cer-

tiorari.

Dated: September 14, 2000

Respectfully submitted,

Birt LOCKYER

Attorney General of the State

of California

RICHARD M. FRANK

Chief Assistant Attorney

General

Mary E. HACKENBRACHT

THOMAS GREENE

Senior Assistant Attorneys

General

JOHN DONHOFF

Marc N. MELNick

(Counsel of Record)

Deputy Attorneys General

[Additional Counsel Listed On

Inside Front Cover]