Stanford University Patent Infringement Case Is Dismissed and University Learns Lesson in Drafting Assignment Agreements
By Adrienne Baker – Edited by Anthony Kammer
Bd. of Trs. v. Roche Molecular Sys., Inc., 2008-1509, -1510 (CAFC Sept. 30, 2009) Opinion
On September 30, the Court of Appeals for the Federal Circuit (“CAFC”) affirmed in part, vacated in part, and remanded with instructions the District Court for the Northern District of California decision. The lower court’s decision held several Stanford University patents invalid for obviousness, dismissed Roche’s counterclaim for judgment on ownership, and declined to consider Roche’s affirmative defense based on ownership. The CAFC vacated the lower court’s decision that Stanford’s patents were invalid and ruled that the University did not have standing to sue, because of contract language indicating that the patent rights belong to an outside corporation. Additionally, the CAFC affirmed the lower court’s decision that Roche’s counterclaim for judgment on ownership was barred due to a four-year statute of limitations. However, unlike the lower court, the CAFC held that statute of limitations does not preclude a party from raising affirmative defenses.
PatentlyO provides an overview of the case. Inside Higher Ed expressed surprise that the case turns on the language of Stanford’s assignment agreement and not on other substantive issues, such as the interplay with federal Bayh-Dole Act and the bona fide purchaser arguments. (more…)