Experimental use challenge

The US Supreme Court is expected to decide Thursday (June 26) whether to hear Duke University's appeal of a ruling that closed a patent law loophole that the school says is critical to the progress of academic science. Duke wants the high court to review an October 2002 federal appellate court decision saying that the school is not entitled to protection under an exception to patent law created to keep noncommercial science research free from infringement claims. "Duke University hopes the court will agree to review the case, since the issues it presents affect academic researchers at campuses across the country," Duke spokesman David Jarmul wrote in an e-mail response to a request for comment. The court is expected to discuss the case (Madey v. Duke University, 307 F3d 1351 [Fed Cir 2002]) on Thursday and to make its decision known on Friday. Duke invoked the experimental use exception in its defense against a suit by John M.J. Madey for allegedly infringing his patent on free electron laser (FEL) technology. Arguing that the school's role was to teach and expand knowledge, rather than to profit from patented discoveries, Duke claimed that it owed Madey nothing.Experimental use got the school off the hook in the trial court, but last year Duke lost on appeal to Madey, a physicist who ran the FEL laser facility at Duke for almost a decade. The school is in the business of science, including the business of landing federal grant dollars, the appellate court said. Therefore, Duke is not entitled to shelter under the experimental use exception, which exempts infringing uses that are "solely for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry."Twenty-three individual universities, the Association of American Medical Colleges, the Association of American Universities, the Association of University Technology Managers, and the Howard Hughes Medical Institute signed off on an amicus brief backing Duke's position in the high court.But Madey picked up a key ally at the end of May when the US solicitor general filed a brief telling the high court the case was not ripe for review. Furthermore, the solicitor general said, the huge FEL III laser at the center of the controversy is government property, which should be sent to the University of Hawaii where Madey last year landed a $50 million grant to develop technology to detect secret nuclear weapons.In a footnote, the solicitor general's office told the Supreme Court that the Department of Energy has asked Duke to send the laser to the University of Hawaii "in order to carry out a federal grant project supporting important domestic security-related research."One observer predicted that the high court would take its cue from the solicitor general and reject Duke's bid for review. "Statistically, the Supreme Court more often than not follows what the solicitor general says, and in this case, the solicitor general has particularly good arguments," said Lawrence Ebert, a patent attorney in Princeton, NJ.Lower court errors left the high court with a flawed and incomplete record, the solicitor general's brief said. The appellate court sent the case back to the trial judge to weigh the facts and force Duke to prove that it is entitled to the experimental use exception. "In the district court, they put the burden of proof on Madey to show that what Duke was doing with the laser was not an experimental use," Ebert said. "The proper burden is to make the university show as part of its defense that they primarily used it for experimental uses, not commercial ones." A career academic researcher, Madey is an unusual challenger to the experimental use exception. He owns the patents related to the FEL because neither Stanford University nor the government wanted them.In the future, however, the holder of patents on tools that academic researchers want to use is more likely to be a lab equipment vendor than an academic researcher like Madey. If it is left standing, the Madey decision gives commercial vendors power to hold the nonprofit medical research establishment hostage, the academic amici said in their brief.

Experimental use challenge

US Supreme Court to consider taking up case over academics' exemption from patent protection

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