U.S. Supreme Court Sides with Roche in Patent Ownership Controversy

Washington, D.C. – The United States Supreme Court has issued its opinion in Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, a patent ownership case. The Court held that the Bayh-Dole Act,35 U.S.C. §§ 200-212, “does not automatically vest title to federally funded inventions in federal contractors or authorize contractors to unilaterally take title to such inventions.” The decision affirmed the Federal Circuit Court‘s decision below. Justice Roberts delivered the opinion, which Justices Scalia, Thomas, Kennedy, Alito, Sotomayor, and Kagen joined. Justices Breyer and Ginsberg dissented.

In this case, an inventor performed some research while he worked for Stanford University and had signed a patent ownership assignment agreement with Stanford. The inventor later left this employment and performed further research, culminating in an invention, while employed by Roche. He had also signed a patent assignment agreement with Roche. Essentially, controversy was over whether Stanford or Roche had a valid assignment of the patent rights. The Supreme Court’s decision sided with Roche.

An analysis by the SCOTUS blog noted “Of particular interest to Court watchers, the Court paid no heed in either case to the views of the Solicitor General, which usually has a high degree of success in pressing government views on the Court, especially in statutory cases, and has led much of the charge criticizing Federal Circuit doctrines in the past.”

Indiana Intellectual Property Law News reported on the oral argument. Former Indiana Senator Birch Bayh filed an amicus curaie brief in support of Stanford University. Senator Bayh was a principle sponsor of the Bayh-Dole Act, which Congress passed in 1980. Indianapolis-based Eli Lilly & Company and five other corporations joined an amicus brief in support of Roche.

An audio recording of the oral argument is available here. The merits briefs, including the amicus briefs, are available online on the American Bar Association‘s website. The docket number in the U.S. Supreme Court is 09-1159.

Terms: New Decision, Patent Infringement, Patent Ownership