University Patent Litigation Chris Holman UMKC School of Law Santa Clara University School of Law January 30, 2009

1. University Patent LitigationChris HolmanUMKC School of LawSanta Clara University School of Law January 30, 2009

2. Universities and Patents Bayh-Dole Act (1980) Intended to promote commercialization of nascent technology Can Patents Deter Innovation? The Anticommons in Biomedical Research (1998) Michael Heller & Rebecca Eisenberg Madey v. Duke University, 307 F.3d 1351 (Fed. Cir. 2002) Are Universities Patent Trolls? (2007) Mark Lemley

3. Universities and Human Gene Patent Litigation Basic research never subject of lawsuit Most questionable enforcement activities involve university patents, including all patents asserted in genetic testing context

4. Query Searched filings in U.S. district courts for patent lawsuits Federal Circuit court of appeals just for interference appeals UNIVERSITY OR UNIV OR COLLEGE OR SCHOOL OR "BOARD OF REGENTS" OR "CURATORS" OR INSTITUTE OR POLYTECH! OR ACADEMY OR SEMINARY OR CONSERVATORY January 1, 2000 to January 24, 2009

5. Result Stanford IP Litigation Database (All district courts � 279 hits Westlaw (District Court Dockets) � 537 hits Many of these are not universities Westlaw (Federal Circuit docket) � 3 interference appeals and a few cases not coded for patent in district court docket

6. Universities Accused of Infringement 13 confirmed patent infringement 3 Athletics 3 Instructional/ administrative software 3 Hospital Software for monitoring OTC drugs provided to state health departments (2007) Declaratory judgment action only

7. Universities Accused of Infringement University selling crop seeds (2004) Seed companies as co-defendants 11th amendment dismissal Research collaboration with company and NOAA (2005) System for killing aquatic nuisances 11th amendment dismissal

8. Universities Accused of Infringement 5 cases labeled as patent infringement or DJ actions, but unconfirmed 3 after 2002 Other defendants are IBM and CEO of Chase Manhattan Bank Construction firm is primary defendant, patent claims �load bearing structure� DJ action by university hospitals, settled prior to answer

9. Interference Appeals 10 appeals to Federal Circuit or District Court 2 intra-university 7 university victories in Board of Patent Appeals and Interferences Claimed Subject Matter 6 Biotech Pharma Medical device Superconducting material Unknown

10. Inventorship Disputes 16 external relationship Mostly collaborations and consulting 2 intra-university 1 lawsuit filed against HHS/NIH 9 internal relationship Mostly allegedly omitted graduate students and research fellows

11. Inventorship Disputes Claimed subject matter 9 Biotech 9 Pharma 3 Medical devices Vaccine Non-pharm chemistry Photovoltaic Synthetic lumber

12. University Patent Enforcement Of cases I could confirm: 139 lawsuits filed by university joining exclusive licensee Some exclusive licensees are NPEs 51 lawsuits filed by university alone Sometimes against a current or former licensee Some lawsuits seem inconsistent with original justification for Bayh-Dole Some lawsuits appear �troll-like�

13. Patents Asserted by NPE Universities NYU 6,236,978 System and method for dynamic profiling of users in one-to-one applications 6,285,380 Method and system for scripting interactive animated actors MIT 5,177,685 Automobile Navigation System Using Real Time Spoken Driving Instructions (�Back Seat Driver� Project)

14. NPE Lawsuits in Biopharma In re: Columbia University Patent Litigation University of Rochester v. G.D. Searle Ariad v. Amgen Alzheimer�s Institute of America v. Mayo Institute