Live by the Sword: Challenges to University-owned Patents

By Tom Engellenner
To date, university-owned patents have been challenged in IPR proceedings only when the university has thrown the first punch.  Of the over 300 inter partes review petitions filed during the past nine months since this provision of the AIA became effective in September 2012, only 9 of the petitions have challenged patents owned by American institutions of higher education.  Despite their fears of “patent assassins,” the patents obtained by institutions of higher education do not appear to have been maliciously targeted for challenge.  In each of the nine instances where a university patent has been challenged, the petition has been filed in response to litigation commenced by the university owner or its licensee.

Universities, colleges, hospitals and other non-profit research institutions are the recipients of thousands of patents each year.  By some estimates, there are over 100,000 patents currently in force and owned by these institutions.  For several years prior to the passage of the America Invents Act, many universities and their trade organization, the Association of University Technology Managers (AUTM) were adamantly opposed to inter partes and post-grant review of patents.  In a 2009 open letter (republished in full on the AUTM website), the directors of nearly a dozen university technology transfer offices raised the specter of “patent assassins” lurking out there who would seek to disrupt or derail their “scientific leadership.”

An analysis of the nine actual challenges (9 out of a possible 100,000) reveals a very different story.  In each instance, the university provoked the challenge by seeking to enforce the patent against the petitioner!

Three of the challenges, IPR2013-00005, IPR2013-00006 and IPR2013-00008, were brought by Micron Technologies, Inc. against the University of Illinois after the university sued Micron for infringement. In all three cases, the petition was granted and review proceedings initiated. The patents undergoing review (US Patents 6,444,533; 6,888,204 and 5,872,387) are directed to passivation of semiconductor devices.

Two more of the challenges, IPR2012-00006 and IPR2012-0007 involve petitions by Illumina, Inc. against patents owned by Columbia University.  Again, the petitions were filed only after Columbia University sued Illumina for patent infringement and again the petitions were granted and proceedings initiated.  The patents undergoing review (US Patents 7,713,698 and 7,790,869) are directed to methods for decoding DNA and RNA.

Petition No. IPR2013-00041 was brought by St. Jude Medical, Inc. against the University of Michigan after the university sued the petitioner for breach of a license agreement.  Again, the petition was granted.  The patent now undergoing review (US Patent 5,746,775) is directed to methods of making calcification resistant bioprosthetic tissue.

In Petition Nos. IPR2013-116, IPR2013-118 and IPR2013-119, Gnosis SpA sought review of three patents owned by the South Alabama Medical Science Foundation.  Each of the three patents had been asserted by the Foundation and its licensee, Merck, against Gnosis in a federal district court patent infringement suit or proceedings before the International Trade Commission.  Again, the petition was granted.  The three patents (US Patents 5,997,915; 6,673,381 and 7,172,778) are directed to nutrient compositions as vitamins.

Of course, we are only nine months into the inter partes review process and challenges to patents owned by American universities, hospitals and other non-profit research institutions may become more widespread in the future.  For the present, though, the fear of “patent assassins” targeting the inventions arising out of federal sponsored research at universities does not appear to be well-founded.

By Tom Engellenner

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Pepper Hamilton's blog all about challenging and defending patents after issuance: inter partes review, post grant review, reexams & foreign oppositions.
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