Pruetz Law Team Wins Patent Victory
For Roche in the U.S. Supreme Court!
On June 6, the Supreme Court issued a 7-2 opinion in favor of Roche in Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, bringing to a close this closely watched patent infringement dispute. The Court affirmed the Federal Circuit's holding that the Bayh-Dole Act does not change the ordinary rules of patent assignment, and Roche was therefore a co-owner by assignment of the three HIV test method patents asserted against it by Stanford. The Court rejected Stanford's argument that the Bayh-Dole Act automatically transfers the patent rights in an invention conceived or reduced to practice using federal funds to the federal contractor, even in the absence of a valid assignment by the inventor.
This is the first patent case in which the Supreme Court affirmed the Federal Circuit despite the Solicitor General supporting reversal.
Adrian Pruetz has been lead counsel for the Roche companies in this dispute since 2004. Adrian and her team won summary judgment for Roche in the trial court, invalidating the Stanford patents for obviousness. They went on to win the case on Stanford's appeal to the Federal Circuit and before the en banc Court on rehearing, based on ownership and standing defenses that were also asserted by Roche. Adrian is the Counsel of Record for Roche on Stanford's appeal of the Bayh-Dole issue to the U.S. Supreme Court. Along with co-counsel, Adrian and her Pruetz Law colleagues Erica Pruetz, Lauren Gibbs and Avi Schwartz won their third and final victory for Roche in the Supreme Court.
Relying heavily on the brief prepared by Pruetz Law and co-counsel, the Supreme Court refused to set aside more than 200 years of precedent under the Patent Act. The Court held that the Bayh-Dole Act does not alter the longstanding principle that individual inventors own their inventions unless and until they assign them to another. In this case, Stanford sent a research fellow, Dr. Mark Holodniy, to Cetus Corporation, a biotechnology company later acquired by Roche, to avail himself of Cetus' expertise and proprietary materials. As a condition of access to Cetus, Holodniy signed a Visitor Confidentiality Agreement in which he stated that he would "assign and hereby does assign" to Cetus his "right, title and interest to each of the ideas, inventions and improvements" made "as a consequence of [his] access" to Cetus.
Holodniy spent nine months working with Cetus scientists on the research that led to the patented HIV assay. The method for quantifying the amount of HIV in blood, for which Stanford obtained three patents, was conceived at Cetus. Once back at Stanford, Holodniy and the other named inventors used federal funds to test the HIV assay on infected patients, and this use gave rise to Stanford's claim that it had exclusive rights to the patents as a federal contractor.
The Court held that the Bayh-Dole Act "does not displace an inventor's antecedent title to his invention," or govern the rights of third parties, but only provides that federally funded contractors "may keep title to whatever it is they already have" as against the Government. In upholding Holodniy's assignment of patent rights to Cetus, the Court declined to disturb the Federal Circuit's decision that Holodniy's assignment to Cetus trumped an earlier agreement with Stanford in which he merely "agreed to assign" patent rights in the future. As this ruling confirmed that Roche is a co-owner of the patents at issue, and that Stanford lacked standing to sue for Roche for infringement, this case will at last be dismissed.
Sincerely,
Adrian and Erica Pruetz
Click here to read the Supreme Court's opinion.