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Board of Trustees of Leland Stanford Junior University v. Roche Molecular Systems

131 S. Ct. 2188 (2011)

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Board of Trustees of Leland Stanford Junior University v. Roche Molecular Systems

United States Supreme Court

131 S. Ct. 2188 (2011)

Facts

Mark Holodniy was a research fellow at Stanford University (plaintiff) working on techniques for measuring human immunodeficiency virus (HIV) levels in blood. Stanford was collaborating on HIV research with a small company called Cetus and arranged for Holodniy to conduct some research there. Holodniy had signed a contract in which he promised to assign to Stanford his right, title, and interest in inventions that resulted from his employment (Stanford agreement). To gain access to the Cetus lab, Holodniy signed another agreement assigning to Cetus all right, title, and interest in any ideas and inventions resulting from his work there (Cetus agreement). While at Cetus, Holodniy devised a procedure for quantifying the amount of HIV in a blood sample. Holodniy then returned to Stanford where the procedure was refined. Stanford later secured assignments and obtained three patents. Meanwhile, Roche Molecular Systems, Inc. (Roche) (defendant) became a successor in interest to Cetus and commercialized the procedure Holodniy developed. Some of Stanford’s research was funded by the National Institutes of Health (NIH). That federal funding subjected Stanford’s inventions to the Bayh-Dole Act of 1980 (act). As required by the act, Stanford granted the government nonexclusive, nontransferable, paid-up licenses to use the inventions resulting from federally funded research and notified the NIH that Stanford elected to retain title to the inventions. Stanford also filed suit against Roche, alleging that Roche’s products infringed Stanford’s patents. Roche argued that it was a co-owner of the HIV-quantification procedure due to Holodniy’s assignment of rights in the Cetus agreement. Stanford responded that Holodniy had no rights to assign to Cetus because Stanford’s research was federally funded and that, under the act, Stanford automatically owned Holodniy’s invention. The district court entered judgment in favor of Stanford. The appellate court reversed, and the United States Supreme Court granted Stanford’s petition for certiorari.

Rule of Law

Issue

Holding and Reasoning (Roberts, C.J.)

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