Intellectual Property: Board of Trustees of the Leland Stanford Jr. University v. Roche Molecular Systems, Inc. LITIGATION/CONTROVERSY

WilmerHale is representing Roche Molecular Systems, Inc. before the U.S. Supreme Court in Board of Trustees of the Leland Stanford Jr. University v. Roche Molecular Systems, Inc. The Court granted certiorari in November to address whether provisions of the Bayh-Dole Act allow federal contractor universities to take title to any invention arising from federally funded research, even when, as here, the inventor assigned the invention to a third party in exchange for valuable access and expertise that led to the invention’s conception.

The dispute involves tests for measuring the efficacy of HIV treatments. One of the inventors, a Stanford researcher, conceived of his invention while working as a visiting researcher at Cetus Corporation, Roche’s predecessor-in-interest. His work at Cetus was governed by a contract presently assigning any resulting inventions to Cetus. After returning to Stanford, where his work was governed by a future promise to assign inventions to the university, he performed clinical trials on the invention—work that, according to Stanford’s allegations, proceeded under a federal grant. Roche developed test kits that quantify the level of HIV in the blood and are used in hospitals and clinics throughout the country. The researcher and other Stanford scientists eventually obtained patents claiming methods of quantifying HIV in human blood and sued Roche for infringement.

Citing longstanding precedent holding that an inventor’s present assignment (such as the one made to Cetus) trumps a future promise to assign an invention, the Federal Circuit held that Roche was a co-owner of the claimed invention, preventing Stanford from pressing any claim for infringement against Roche. Stanford argues, however, that because the clinical trials supposedly were funded by federal grants, the Bayh-Dole Act allows universities receiving federal funding for research to "take title” to resulting inventions regardless of any contract. Roche argues that the state provides only a right to "retain title” to "inventions of the contractor”—that is, a right to keep title to inventions the contractor has already obtained from the inventor pursuant to a valid assignment. Because Stanford failed to obtain a valid assignment here, the Bayh-Dole Act does not alter the ordinary operation of the contractual assignment to Cetus.

Roche’s position is supported by amicus briefs filed by the Pharmaceutical Manufacturers Association of America, the Biotechnology Industry Organization, the Intellectual Property Owners’ Association, the American Association of University Professors, and a multi-industry coalition of companies led by Intel Corporation. Stanford is supported by several other universities and the U.S. government, among others.

On June 6, 2011, in a 7-2 decision, the Supreme Court affirmed Roche’s position. In the opinion, which adopted many of the arguments made in WilmerHale’s brief, Chief Justice Roberts wrote: "Although much in intellectual property law has changed in the 220 years since the first Patent Act, the basic idea that inventors have the right to patent their inventions has not."

WilmerHale partner Mark Fleming argued the case before the Supreme Court. Other WilmerHale lawyers on the team are Paul Wolfson, Mark Fleming, Gregory Lantier, Eric Citron and Adam Romero. We are joined by co-counsel Adrian Pruetz of Pruetz Law Group LLP and Brian Cannon of Quinn Emanuel Urquhart & Sullivan, LLP.

Supreme Court Decision

Transcript of Oral Argument


Supreme Court Merit Briefs

WilmerHale is representing Roche Molecular Systems, Inc. before the U.S. Supreme Court in Board of Trustees of the Leland Stanford Jr. University v. Roche Molecular Systems, Inc. The Court granted certiorari in November to address whether provisions of the Bayh-Dole Act allow federal contractor universities to take title to any invention arising from federally funded research, even when, as here, the inventor assigned the invention to a third party in exchange for valuable access and expertise that led to the invention’s conception.

The dispute involves tests for measuring the efficacy of HIV treatments. One of the inventors, a Stanford researcher, conceived of his invention while working as a visiting researcher at Cetus Corporation, Roche’s predecessor-in-interest. His work at Cetus was governed by a contract presently assigning any resulting inventions to Cetus. After returning to Stanford, where his work was governed by a future promise to assign inventions to the university, he performed clinical trials on the invention—work that, according to Stanford’s allegations, proceeded under a federal grant. Roche developed test kits that quantify the level of HIV in the blood and are used in hospitals and clinics throughout the country. The researcher and other Stanford scientists eventually obtained patents claiming methods of quantifying HIV in human blood and sued Roche for infringement.

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