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 Patents
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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]”. 

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.