Supreme Court Takes Up Patent Inventorship Dispute

WASHINGTON, D.C. - (Mealey's) Four months after inviting the views of the U.S. solicitor general, the U.S. Supreme Court on Nov. 1 agreed to hear a case that could better define the rights of federal contractor universities in patent disputes arising from federally funded research (Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems Inc., No. 09-1159, U.S. Sup.).

Petitioner Board of Trustees of the Leland Stanford Junior University seeks review of a February 2009 ruling by the Federal Circuit U.S. Court of Appeals that it lacks standing to maintain patent infringement claims against respondent Roche Molecular Systems Inc.

The dispute centers on ownership of an HIV testing method for which the university holds three patents, Nos. 5,968,730, 6,503,705 and 7,129,041, with each naming Stanford researcher Mark Holodniy as inventor.  When Holodniy joined Stanford, he signed a "copyright and patent agreement" obligating him to assign inventions to the university.  Furthermore, pursuant to a collaboration between Stanford and nonparty Cetus Corp., Holodniy signed a "visitor's confidentiality agreement" in which he also assigned rights to any inventions devised as a "consequence" of his work.

Roche purchased Cetus assets -- including its agreements with Stanford and its researchers -- and began manufacturing HIV detection kits.  Stanford afterward filed the patent application to which all three patents claim priority and later entered an agreement with the National Institutes of Health that gave the government certain rights to the invention.  Still later, a Stanford official gave a slide presentation at Roche that asserted Stanford's ownership of the invention and that offered Roche an exclusive license.  No license was agreed upon, though, leading Stanford to file the instant suit in the U.S. District Court for the Northern District of California, alleging infringement.

Roche argued that it possesses ownership, that Stanford lacked standing and that the patents were invalid for obviousness.  The District Court agreed with Roche regarding validity but found that its ownership claims were barred by the California statutes of limitation, laches and the Bayh-Dole Act.  On appeal, the Federal Circuit affirmed in part and reversed in part, finding with regard to the Bayh-Dole Act that the statute did not negate Holodniy's assignment to Cetus and that Stanford did not show why its election of title under that law had the power to void a prior, otherwise valid assignment of patent rights.

On June 28, four days after discussing the case at conference, the Supreme Court invited the U.S. solicitor general to weigh in on the dispute. On Sept. 28 the government filed a brief that lends strong support to Stanford, urging the Supreme Court to grant certiorari.

[Editor's Note:  Full coverage will be in the Nov. 15 issue of Mealey's Litigation Report: Intellectual Property.  In the meantime, the documents are available at www.mealeysonline.com or by calling the Customer Support Department at 1-800-833-9844.  Orders list.  Document #16-101115-002R.  Solicitor general's brief.  Document #16-101115-003B. For all of your legal news needs, please visit www.lexisnexis.com/mealeys.]

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Mealeysonline.com - Document #16-101115-002R

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For more information, call editor Melissa Ritti at 610-205-1130, or e-mail her at melissa.ritti@lexisnexis.com.