This publication, sent via e-mail on a complimentary basis, summarizes the previous week's published patent decisions by the Court of Appeals for the Federal Circuit by Patterson, Belknap, Webb & Tyler LLP. It is prepared by attorneys in the firm's Patent Practice Group.


PREEMPTION
University Of Colorado Foundation, Inc., et al., v. American Cyanamid Corp., No. 02-1587 (September 3, 2003) Opinion by Gajarsa, joined by Rader and Bryson

The Federal Circuit held that a state law claim for unjust enrichment was not pre-empted by federal patent law.

Several doctors developed a formula for a prenatal vitamin that would permit increased iron absorption over vitamins available on the market. The doctors provided a confidential paper describing the improvement to American Cyanamid. Without informing the doctors, American Cyanamid applied for a patent that covered the improved vitamin and copied sections of the doctors' confidential paper into their application. American Cyanamid obtained the patent and successfully enforced it against generic manufacturers. The doctors filed a claim for unjust enrichment against American Cyanamid.

The Federal Circuit found that this claim was not pre-empted by federal patent law. The court reasoned that the doctors' did not seek "patent-like protection" for their idea with their unjust enrichment claim. Instead, it was truly a claim for breach of an implied-in-law contract between the doctors and American Cyanamid relating to the confidentiality of the paper. The court also found that the doctors' claim did not conflict with the purposes of the patent system explained in the Supreme Court's decision in Aronson v. Quick Point Pencil. Recovery on the claim would allow the doctors to recover the fruits of their invention, which thus fostered innovation, but would not withdraw ideas from the public domain.

The court also affirmed the damages award, which consisted of a disgorgement of that portion of American Cyanamid's profits attributable to its right to exclude generic competitors, and affirmed that the doctors were the sole inventors of the patent obtained by American Cyanamid.

http://www.fedcir.gov/opinions/02-1587.doc