Universities File Amicus Briefs in Stanford v. Roche

After losing its case on appeal to the Federal Circuit, Stanford University has petitioned the Supreme Court for review.  In Stanford v. Roche, Stanford sued the pharmaceutical company Roche for patent infringement in 2005.  Stanford claimed that the method used by Roche to quantify HIV was devised by a Stanford researcher who was involved in work at both Stanford and a company purchased by Roche.  Although the Northern District of California held, relying partly on the Bayh-Dole Act, that the patent belonged to Stanford, the case was overturned.  On appeal, the Federal Circuit held that a Stanford researcher compromised Stanford's rights to a particular patent due to the language used in the researcher's contracts with Stanford and with Roche.  

In its petition for writ of certiorari, Stanford argues that the Federal Circuit's decision essentially allows for-profit companies to "obtain shared ownership of [inventions sponsored through federal grants] simply by entering into a side-agreement with an inventor" thereby circumventing any requirements set forth by Bayh-Dole.  Stanford argues that the Federal Circuit's holding could detrimentally affect public access to the inventions because it allows for-profit corporations to gain title to patents developed through federal funds more easily: "The Federal Circuit's decision will also permit for-profit commercial entities to acquire invention rights for the purpose of 'shelving' the technology to deprive their competitors of the use of the technology, contrary to the intent of the Bayh-Dole Act."  Stanford further asserts that the decision allows inventors to unilaterally terminate both the university's patent rights as well as the government's.  

MIT has also urged the U.S. Supreme Court to review the case.  In its amicus brief, MIT notes that some of the 3,673 patents granted to MIT since 1980 (153 in fiscal year 2009, alone) may fall under dispute if the Federal Circuit's decision stands.  MIT argues that the decision in Stanford v. Roche  threatens revenue and could dramatically affect economic costs to the United States because of the adverse impact on the current technology-transfer system.  It also argues that the "clarity of title," one of Bayh-Dole's supposed successes, is threatened by Federal Circuit's holding.  MIT's brief is of particular significance because of its heavy emphasis on the importance of Bayh-Dole.  MIT argues that Bayh-Dole provides for a clear chain of title and that Stanford owns the patents, regardless of the language used in its contract.  In fact, MIT argues that the Federal Circuit did not need to analyze the language of the contracts and should have stopped with a determination that Bayh-Dole provides for clear ownership of the patent.  

The Wisconsin Alumni Research Foundation (WARF), representing the ten University of Wisconsin campuses, has filed an amicus brief in support of Stanford's position, as well.  WARF asserts that the Federal Circuit's decision makes ownership rights murky and jeopardize the federally funded research efforts at universities.  It also suggests that the Federal Circuit misinterpreted the Bayh-Dole Act because the decision effectively allows inventors to terminate a university's rights to patent ownership.  

In addition to the amicus briefs by WARF and MIT, the Association of American Universities, Association of American Medical Colleges, Association of Public and Land-Grant Universities, the Association of University Technology Managers and Council on Governmental Relations joined together to file a single amicus brief in support of Stanford's petition to the Supreme Court.  Additional amici to the brief include over forty universities.  Of particular significance, Harvard University, Johns Hopkins University, University of North Carolina at Chapel Hill, University of Texas at Austin, University of Washington and Yale University--all of whom rank in the top 20 either in terms of patents received or federal research and development dollars received (or both), have all signed on as amici.

While it appears that Stanford v. Roche provides an potential solution for universities for the future (no doubt, universities have already revised the contracts it requires its researchers to sign in an effort to avoid the contract language found in Roche), the decision could potentially affect hundreds--or thousands--of patents created prior to the Federal Circuit's decision.  Indeed, it does appear that the holding in Stanford v. Roche complicates ownership rights and, if allowed to stand, could result in costly litigation for universities.

KC