Trinity Industries, Inc. v. Road Systems, Inc.

235 F. Supp. 2d 536 (2002)

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Trinity Industries, Inc. v. Road Systems, Inc.

United States District Court for the Eastern District of Texas
235 F. Supp. 2d 536 (2002)

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Facts

Trinity Industries, Inc. and Texas A&M University (TAMU) (plaintiffs) worked together to create and patent a method for treating highway guardrail ends. They accepted funding from the Texas Department of Highways and Public Transportation, which received the funds from the United States Department of Transportation. Trinity and TAMU sued Road Systems, Inc. (defendant) for patent infringement. Road Systems argued that the patent was invalid because Trinity and TAMU did not disclose in their patent application that the federal government helped fund their research, which violated the Bayh-Dole Act of 1980, a law requiring disclosure of any funding agreements patent holders had with the federal government. Trinity and TAMU argued that they did not have a funding agreement with the federal government but that even if they did, a failure to disclose the agreement was not material to their patent application and thus had no bearing on Trinity and TAMU’s ability to enforce the patent against infringers like Road Systems. Road Systems moved for summary judgment.

Rule of Law

Issue

Holding and Reasoning (Schell, J.)

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