Justia Patents Opinion Summaries

The Board of Trustees of Stanford University filed suit against Roche Molecular Systems ("Roche") claiming that their HIV test kits infringed upon Stanford's patents. The suit stemmed from Stanford's employment of a research fellow who was arranged by his supervisor to work at Cetus, a research company developing methods to quantify blood-borne levels of HIV. The research fellow subsequently devised a PCR-based procedure for measuring the amount of HIV in a patient's blood while working with Cetus employees. The research fellow had entered into an agreement to assign to Stanford his "right, title and interest in" inventions resulting from his employment there and subsequently signed a similar agreement at Cetus. Stanford secured three patents to the measurement process. Roche acquired Cetus's PCR-related assets and commercialized the procedure into HIV test kits. At issue was whether the University and Small Business Patent Procedures Act of 1980, 35 U.S.C. 200 et seq., commonly referred to as the Bayh-Dole Act ("Act"), displaced the basic principle that rights in an invention belonged to the inventor and automatically vested title to federally funded inventions in federal contractors. The Court held that the Act did not automatically vest title to federally funded inventions in federal contractors or authorize contractors to unilaterally take title to such inventions and therefore, affirmed the judgment of the Court of Appeals for the Federal Circuit, which held that the research fellow's agreement with Cetus assigned his rights to Cetus, and subsequently to Roche; that the Act did not automatically void an inventor's rights in federally funded inventions; and thus, the Act did not extinguish Roche's ownership interest in the invention and Stanford was deprived of standing. View "Board of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Systems, Inc." on Justia Law

The owner of patents for computer modems and methods of identifying modems licensed the patents to Rockwell; a related agreement gave Rockwell sub-licensing rights. Rockwell reorganized and assigned its rights. The patent owner acknowledged the assignment. Defendants obtain modem chips from a "spin off" of the companies formed in the Rockwell reorganization. The patent owner sued for infringement. The district court held that the defendants are licensed and entered summary judgment that certain patents are invalid. The Federal Circuit reversed in part, first holding that the assignment was within Rockwell's sub-licensing rights without further consent. Two patent claims were invalid for indefiniteness, but there was a material issue of fact on whether two others were invalid for failure to disclose necessary algorithms.