Category Archives: Litigation

If state university patent policy is actually state law . . .

Posted on July 31, 2018 by Gerald Barnett

Over the course of a number of years, Professor Galen Suppes was involved in litigation with the University of Missouri over rights to inventions. Among other things, the University claimed ownership of inventions that Suppes made at another institution before … Continue reading →

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Would an Apple and Broadcom v Caltech case deliver a second pounding to faux Bayh-Dole?

Posted on September 19, 2016 by Gerald Barnett

[Yes, you read the title correctly–Apple and Broadcom should be suing Caltech.] In Bayh-Dole, the public covenant that runs with patent rights in subject inventions is not as well developed as it was in the Institutional Patent Agreements. It is … Continue reading →

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What universities can and can’t do with their patents

Posted on July 18, 2016 by Gerald Barnett

We started an investigation into university IP practice with this question: Should university management of patents be any different from any other owner of patents? The answer we found is “yes.” University patents not only should be different–they clearly are … Continue reading →

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Should universities manage patents like corporations do?

Posted on July 2, 2016 by Gerald Barnett

We have discussed how university-owned patents are not like other patents. A university owner of patents is not free to do just anything with a patent. A university-held patent is not simply a property right–there are limitations (though many university patent administrators are … Continue reading →

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A Good Policy for a Patent-Trolling University

Posted on June 26, 2016 by Gerald Barnett

Let’s continue the discussion of how university-owned patents might differ from other patents. We have considered the idea of “first use exhaustion” under Bayh-Dole: if the express purpose of Bayh-Dole is to use the patent system to promote utilization of … Continue reading →

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Conspiracy against inventors’ rights and 18 USC 241/42 USC 1983

Posted on June 9, 2016 by Gerald Barnett

University administrators have been fond to claim that the Bayh-Dole Act gives their universities ownership of inventions made with federal support–or a right of first refusal, or a prohibition on assigning ownership to anyone other than the university. This was … Continue reading →

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Subject Patent Exhaustion

Posted on June 6, 2016 by Gerald Barnett

Caltech has just sued Apple for infringement of a patent. The patent in question, “Serial concatenation of interleaved convolutional codes forming turbo-like codes” (US Patent No. 7,116,710) includes this statement of government interest: GOVERNMENT LICENSE RIGHTS The U.S. Government has … Continue reading →

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Life in the fast lane surely make you lose your infringement case

Posted on February 11, 2016 by Gerald Barnett

Here is a simple question: Can a university sue for infringement of a patent on a subject invention? Clearly, one answer is “of course”–universities do so all the time, often playing the troll or the jilted lover. Let’s put the question another way: Does … Continue reading →

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Another Thing That Can Go Wrong With HR 3309

Posted on January 27, 2014 by Gerald Barnett

Are you tracking the anti-troll legislation making its way through Congress? Chris Gallagher has been doing that, and some of you are no doubt on his mailing list with updates. If you are an administrator at a university, and you … Continue reading →

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To be the lighthouse, not the reef

Posted on January 15, 2014 by Gerald Barnett

Judging from the tone of Chris Gallagher’s reporting on S. 1720 and S. 1310, the anti-troll bills working their way through the US Senate, university administrators are not paying much attention to the consequences. If these bills are combined and … Continue reading →

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