New Cases and Developments

NACUA's Legal Resources staff summarizes current higher education cases and developments and provides the full text of selected cases to members. New cases and developments are archived here for up to 12 months.  Cases provided by Fastcase, Inc.

Selected Topics: Intellectual Property
New Search
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

Trademark & Licensing; Intellectual Property; Due Process; Constitutional Issues

Robbie Wolff v. Excelsior College (D. Nev. August 28, 2017)

Order granting Defendant’s Motion to Dismiss for Lack of Personal Jurisdiction. Plaintiff, a test-prep business in Nevada that prepares materials for the Clinical Performance in Nursing Examination (CPNE®) administered by Defendant, Excelsior College, sought a declaration that he had not infringed on Defendant’s trademark rights when using the term “CPNE” in his test-prep materials. The court found that the case did not arise out of Defendant’s forum-related activities – two cease-and-desist letters to Plaintiff, as well as solicitation and acceptance of Nevada residents for its remote learning programs – and thereby failed to establish the requisite elements for specific-jurisdiction. As a result, the court granted Defendant’s Motion to Dismiss without leave to amend and denied as moot and without prejudice all other pending motions. 

Trademark & Licensing; Intellectual Property

American InterContinental University, Inc. v. American University (N.D. Ill. Aug. 14, 2017)

Memorandum Opinion and Order granting Plaintiffs leave to propose an appropriate jurisdiction for transfer. Career Education Corporation (CEC), the parent corporation of American InterContinental University, Inc. (AICU), filed a trademark application for the mark “American InterContinental University” and a logo. American University (AU) filed an opposition to the application, claiming a likelihood of confusion with AU's registered marks. CED and AICU then filed suit requesting a declaratory judgment that their trademark does not infringe on AU's trademarks, that their continued use of their marks does not violate state law, that any claims of infringement brought by AU are limited by the defenses of laches and acquiescence, and that AU's registered trademark is invalid due to abandonment and lack of ownership. AU has moved to dismiss the suit for lack of personal jurisdiction. The court found that it lacked personal jurisdiction over AU because the University is not based in Illinois and the suit did not arise out of AU’s contacts with Illinois. However, the court reserved its dismissal of the case until it has had the opportunity to consider the possibility of transfer.

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]”. 

Copyright & Fair Use; Intellectual Property

Israel v. University of Utah (D. Utah Apr. 18, 2017)

Memorandum Decision and Order granting the University of Utah’s Motion to Dismiss. Plaintiff, a former student at the University, filed suit alleging that the individual Defendants violated her intellectual property rights by producing peer-reviewed publications, academic papers, posters, and presentations based on her copyrighted materials without her consent, and that the University repeatedly failed to address her reports of copyright infringement. The court dismissed Plaintiff’s claims against the University, finding that the University was an arm of the state under the Eleventh Amendment, that Congress had not abrogated states’ immunity to suit under federal copyright statutes or their amendments, and that the University had not consented to suit by endorsing the Copyright Act, accepting federal assistance, or filing state court litigation in federal court.

Patents; Intellectual Property; Research

Ali v. Carnegie Institution of Washington (Fed. Cir. Apr. 12, 2017)

Per curiam Opinion affirming the lower courts’ dismissals of Plaintiff’s claims. Plaintiff was employed in a laboratory at the University of Massachusetts (UMass), where he worked with two researchers listed as inventors on several patents co-owned by UMass and the Carnegie Institution of Washington (Carnegie). Claiming that the two researchers wrongly omitted him as a co-inventor on these patents, Plaintiff filed suit seeking to be added as a named inventor and to recover damages from UMass for any money derived from the patents. The Oregon district court concluded that the Eleventh Amendment provided UMass with sovereign immunity and that UMass had not waived this immunity by accepting funds from the federal government under the Bayh-Dole Act, since no provision in the Act supported Plaintiff’s theory that the receipt of funds was conditioned upon a waiver of sovereign immunity. The DC district court—to which Plaintiff’s case was transferred—concluded that UMass was a necessary party because Plaintiff’s claim jeopardized UMass’s ownership interest in the invention, that UMass could not be joined due to its sovereign immunity, and that UMass would be financially prejudiced if Carnegie were left to defend against the claims on its own. On appeal of these decisions and the DC court’s subsequent denial of Plaintiff’s Motion to remove UMass as a co-defendant, the Federal Circuit affirmed.

Patents; Intellectual Property

Board of Trustees of the University of Illinois v. Micron Technology, Inc. (C.D. Ill. Mar. 28, 2017)

Order denying defendant’s Motion to Dismiss. The University of Illinois entered into an agreement with Defendant to treat Defendant’s wafers with a process patented by researchers at the University and then return the wafers to Defendant for study. The researchers had assigned their interests in the patents over to the University. After concluding that Defendant had commercialized its intellectual property by manufacturing and selling devices that incorporated the University’s patented process without entering into a license agreement with the University, the University’s Board of Trustees filed suit for patent infringement and breach of contract. The Court determined that one of the co-inventors of the patented process was not a necessary plaintiff to the suit because this co-inventor was not named as an inventor on the patent, and therefore that the University had standing to sue as the sole, undisputed owner of the patent by assignment. 

Intellectual Property

Charest v. President & Fellows of Harvard Coll. (D. Mass., Feb. 16, 2016)

Memorandum and Order from the U.S. District Court for the District of Massachusetts, granting-in-part and denying-in-part Defendant's Motion to Dismiss various claims stemming from a dispute about royalty allocations for an invention discovered by the Plaintiff and some of his professors.