I. Background and Qualifications

1. I am Associate Dean of Faculty and Professor of Law at Emory University School of Law. I joined the Emory faculty in 2009. Prior to joining Emory, I was a professor at Chicago-Kent College of Law, Illinois Institute of Technology from 2000-2009. I also served as the Associate Director of the Program in Intellectual Property Law at Chicago-Kent from 2006-2009. I have taught patent law at least once per year every year since entering the academy, as well as teaching advanced classes in International Intellectual Property, International Patent Law, and Patent Litigation. I am the co-author of a casebook, PATENT LITIGATION AND STRATEGY (4th Edition 2013), along with the Honorable Kimberly A. Moore, a judge on the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”), and John F. Murphy, a partner at BakerHostetler. I joined the faculty of Chicago-Kent after being an associate at Wiley Rein & Fielding (now Wiley Rein), a 200+ attorney law firm in Washington, DC, where I specialized in patent and appellate litigation. I associated with Wiley Rein after spending six months working in Budapest, Hungary, with the patent firm Danubia. Prior to my time in Hungary, I served as a law clerk to the Honorable Glenn L. Archer, Jr., of the Federal Circuit while he was Chief Judge, from August 1996 through December 1997, and then while he was Senior Judge, from December 1997 through March 1998. I graduated from Yale Law School with a JD in 1996 and from North Carolina State University in 1993 with a B.S. in Chemical Engineering, where I graduated first in my class and was a valedictorian.

2. Other than preparing this report, I have no ties to Canada or to the Canadian government. The views in this report reflect my considered, independent assessment of the state of U.S. patent law.

II. Introduction

3. The dispute between Eli Lily & Company and the government of Canada arises over the Canadian rejection of Eli Lilly patents on the basis of lack of utility, as that criteria is interpreted and applied under Canada’s Patent Act. In particular, Eli Lilly argues that in adopting certain interpretations of the ‘utility’ requirement under Canada’s Patent Act, Canadian courts are ‘out of step’ with the U.S. interpretation of the utility criteria and, by consequence, have violated Canada’s obligations under NAFTA.