Thursday, August 25, 2011

Jacob Rooksby on University Patent Litigation

Although one might expect universities to seldom initiate patent litigation, Jacob Rooksby reports that they filed over 50 patent cases in 2009 and 2010. In University Initiation of Patent Infringement Litigation, after reviewing the history and criticisms of the Bayh-Dole Act (which allows recipients of federal research funds to patent and license their inventions), Rooksby notes that "[o]ne largely overlooked cost of university involvement in technology transfer is university involvement in patent-related litigation." His article, which was recently published in the John Marshall Review of Intellectual Property Law, seeks to fill that empirical void. Rooksby was an IP litigator for 3 years, and is now pursing a Ph.D. in higher education at UVA.

Rooksby attempted to identify every patent infringement lawsuit filed by universities in 2009 and 2010 by searching Westlaw's Derwent LitAlert database, though he notes that the resulting 57 cases may be underinclusive. His general findings are reported in Part V, and details about each case are in the appendix. Here are a few findings that struck me as interesting:
  • In 12 of the 57 cases, the university initiated litigation without a co-plaintiff. When there was a co-plaintiff, the licensee often had the contractual ability to sue alone, but the university joined anyway.
  • 32 cases involved pharmaceutical or medical technologies.
  • 17 cases were filed in the District of Delaware; the next most popular venue was the District of New Jersey, with 8 cases.
  • In only 3 cases were the litigated patents subject to non-exclusive licenses.
  • Like for-profit actors, universities generally preferred for juries to hear their claims, sought damages, and hired outside counsel.
  • In 10 cases, the university had no co-plaintiff and was not practicing the invention, which "may indicate a purely rents-driven approach to technology transfer, or a breakdown in the licensing negotiation process."
Rooksby is certainly correct that there are high costs associated with these suits, but quantifying the benefits is more difficult. So it is difficult to know what to make of the results, and I suspect readers' reactions will be highly correlated with how they feel about Bayh-Dole patents in general. Still, this article makes a valuable empirical contribution, and I think this area is ripe for follow-up study.

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