CPLRG™ 0003 - Board of Trustees of The Leland Stanford Junior University v. Roche Molecular Systems, Inc. - Sep. 30, 2009

Board of Trustees of The Leland Stanford Junior University v. Roche Molecular Systems, Inc., 583 F.3d at 832, CPLRG 0003 (Fed. Cir. 2009) (LINN, Prost & Moore), aff’d, 131 S. Ct. 502 (2011) stanfordroche093020091

MAJOR ISSUES: Standing–Ownership Counterclaim by Accused Infringer–State Statute of Limitations
Assignment Agreement–Assignment of Present Interest in Future Inventions–Equitable Title–Earlier Agreement to Assign Right in the Future–Bona Fide Purchaser–Bayh-Dole Act

Update:  On June 6, 2011, the Supreme Court affirmed this decision.  See CPLRG 0070.

Stanford University sued a company, Roche, alleging infringement of a patent that named University researchers as inventors.  uspatno7129041 Stanford lacked standing to sue because the company partly owned the patent by virtue of an assignment agreement by one of the inventors (Holodniy).  The agreement was a present assignment of future rights and transferred equitable title.  The equitable title vested as legal title upon the inventor’s later invention, which was not later than the filing of the application for the patent.  The inventor purported to assign his rights to Stanford, but he had no rights to assign.  Stanford was not a bona fide purchaser because it was charged with the inventor’s knowledge.  Roche’s counterclaim for ownership was barred by the applicable state statute of limitations.  The statute did not preclude Roche from challenging Stanford’s standing to sue.

Subsequently, the Supreme Court granted certiorari in this case to view the following question:  “Whether a federal contractor university’s statutory right under the Bayh-Dole Act in inventions arising from federally funded research can be terminated unilaterally by an individual inventor through a separate agreement purporting to assign the inventor’s rights to a third party.”  131 S. Ct. 502 (2010).   On June 6, 2011, the Supreme Court affirmed.  It ruled only on the issue of the Bayh-Dole Act.  In dissent, Justice Breyer urged review of other issues, including the soundness of the Federal Circuit’s law on the interpretation of assignment agreements.  See CPLRG 0070,

CROSS REFERENCES.  On standing to sue and co-ownership, see Chisum Patent Law Digest § 1860, § 9300; Chisum on Patents § 21.03[3][d].

©2010 Donald S. Chisum - All Rights Reserved

Website design by Bluegrass Internet Services