Practice of Higher Education Law; Litigation, Mediation & Arbitration; Patents; Intellectual Property
Regents of the University of Minnesota v. Gilead Sciences, Inc. (D. Minn. October 20, 2017)
Memorandum Opinion and Order granting Defendant’s Motion to Transfer Venue. Plaintiff, Regents of the University of Minnesota (UM), alleged that Defendant, a Delaware corporation, infringed its patent rights by selling over 1 billion dollars of medicine containing the drug sofosbuvir without obtaining a license from UM. Applying the U.S. Supreme Court’s recent decision in TC Heartland, which impacted venue in patent cases, and the subsequent Federal Circuit Court of Appeals decision in Cray, both of which were issued after UM filed the initial action, the court granted Defendant’s Motion to Transfer Venue, because the Defendant did not reside or have a regular and established physical place of business in the district, as required under TC Heartland and Cray.
Patents; Intellectual Property
Regents of the University of California v. Chen (N.D. Cal. July 26, 2017)
Order denying Defendants’ Motion to Dismiss. A former research employee at the University of California allegedly developed several inventions while working at the University. As a condition of his employment, the researcher signed an acknowledgement providing that he had an “obligation to assign [to the University] inventions and patents” developed during his employment. After leaving the University, the researcher started a company called Genia Technologies, Inc., which sought to commercialize the technology the University claims the researcher invented during his prior employment. The researcher then secured patents based on the disputed technology and assigned those patents to Genia. The Regents of the University of California filed suit alleging the researcher violated his agreement by failing to assign his inventions to the University. The researcher and Genia moved to dismiss, and the court denied their Motion, finding that the University’s claims were plausible, not time-barred, and not preempted by federal law. Additionally, the court rejected the researcher’s argument that his duties to assign inventions and patents to the University ended at the conclusion of his employment, finding that this interpretation of the agreement would lead to “absurd result[s]”.