Patent Rights Wrangle Puts Law In Question

Courtesy of Neil Brake, Vanderbilt University MARK III TANGO: Duke is dancing in court with former professor to control use of a free-electron laser like this one at Vanderbilt University. John M.J. Madey, long known as the father of the free-electron laser, has made his career in academic research, not business or law. So Madey did not craft the legal weapon that may close the patent law loophole allowing academic researchers to use patented technology without risking infringement suits; it's a casualty of his attempt to assert rights over equipment he designed. The scientist sued Duke University, alleging that the institution infringed his patents in connection with the Mark III free-electron laser (FEL). To defend the claim, Duke attempted to invoke the "experimental use" exception in patent law, which sometimes allows academic scientists to use new technologies without paying license fees. A federal appellate court took a dim view of the loophole and ruled in Madey's favor last year. Duke hopes the US Supreme Court will consider the case, and observers say that if Madey prevails in that court, this loophole so generous to researchers could be lost forever. "Until now, scientists at nonprofit universities and research institutions have assumed that their research does not implicate patent law so long as it serves no immediate commercial purpose," Duke said in the petition it filed with the US Supreme Court. That assumption is no longer safe, if Madey's case goes forward, the university says. Madey takes a different view. The lesson of the litigation for academic scientists is clear, he says. "Unless you have the good fortune to be at a place that looks after your every need, and not many people do, you need to be versed and skilled in the business and contractual aspects of what you do," he says. RELUCTANT LITIGANT Madey says he was forced to sue Duke so his work with the FEL could go forward. In 1997, 10 years after the university built a laboratory for Madey to work with the FEL, the scientist and the university clashed over rights of access to the technology. He said the institution wanted to permit use that would breach government contracts; Duke said Madey let the equipment lie dormant. Courtesy of John Madey John Madey Negotiations came to an impasse and Duke ousted Madey from leadership of the FEL lab, which houses the laser he built at Stanford University and uses technology on which he holds patents. "The realization suddenly dawned that this was not going to work, and either I was going to end my career or I was going to do whatever it takes to continue," Madey says. He sued, lost on preliminary motions, won on appeal to the Federal Circuit Court of Appeals, and is awaiting word from the US Supreme Court. The Federal Circuit panel ruled that Duke is in the business of research, and so is not entitled to the experimental use exemption. Duke says the appellate panel gutted the exemption by reserving it only for those who use patented technology "solely for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry," and has asked the Supreme Court to review the Circuit ruling. The university's appeal means Madey has won a critical battle in the lawsuit, but he has not yet won rights to the Mark III laser at Duke. HISTORIC FRUSTRATION The FEL project has rarely had an easy time financially, despite a string of scientific successes and commercial possibilities. For one thing, the technology is large and expensive. Hundreds of tons of concrete and steel went into the housing for Madey's new laser project at Hawaii, which will use a FEL made from parts donated by Rockdyne Corp. It's no wonder that Duke is reluctant to release or replace the high-cost equipment. The FEL concept combined Madey's boyhood interest in ham radios and 1950's vacuum-tube technology with the invention of laser technology in 1960. Like a short-wave radio station Madey and his brother Julius ran as teenagers, the FEL began without government support or university interest. Madey's vision of the novel technology that engendered the FEL came out of idle philosophical inquiry while studying in other fields at the California Institute of Technology and Stanford University. He sustained the project with just his amusement and curiosity. He couldn't get anyone to fund the work. "I can remember giving talks where I didn't exactly have to duck rotten fruit, but almost," Madey relates with a chuckle. The US Air Force finally bankrolled FEL research for several years early in Madey's Stanford teaching career. Then military attention shifted and funding slumped in what was to become a familiar pattern. "Money was slow in coming and I ultimately had to write the checks to cover the salaries [and] the costs of development," Madey says. "There were lots of tense moments. But in many ways my colleagues and I were extraordinarily lucky. We had ideas and got funded, then got thrown out on our own and had to live on our wits." Madey, who is 60 years old, has been at the University of Hawaii since leaving Duke in August 1998. He is teaching more than ever and is a lead investigator on a $50 million US project exploring technology for remote detection of secret nuclear weapons and other security threats. Madey would like the Mark III FEL in the Duke lab in Durham, NC, to be sent to Hawaii to aid in that effort. WIDE RANGE Despite the ongoing court fight, the FEL inspires intense cooperation among different scientific disciplines. Jin Hui Shen, optics engineer and research assistant professor at Vanderbilt University, Nashville, worked side-by-side with Vanderbilt physicians to devise a probe that converts the FEL beam into a surgical instrument. He says the FEL helped fuse the skills of surgeons and engineers. "The surgeons most of the time do not think like engineers, and I don't think like a surgeon," Shen says. "But the combination of different backgrounds, I think, is a better environment for new ideas." The FEL has also spawned multiple successor devices and free-electron laser research programs around the country. Researchers are working at Duke (where Madey once worked), the University of Hawaii at Manoa (where he teaches now), Vanderbilt, Stanford, and the University of California, Santa Barbara. "As a scientist, I want to see the potential of the Mark III fully mined," says Glenn Edwards, director of Duke's FEL laboratory, who studies the beam's selective ablation of tissue for delicate surgeries. Biologists at the Department of Energy's Brookhaven National Laboratory are using the FEL technology to determine protein structure. Stanford uses FEL technology in both biomedical research and biophysics. Vanderbilt radiologist Frank Carroll also heads a spinout company called MXISystems. He is looking for funding for new mammography devices, based on FEL technology, that can produce higher-quality images with less radiation. Carroll worked alongside Madey during the lean years, when half-a-dozen scientists were trying to impress military funders with their FEL-based ideas. "They funded the other five guys and told me I was crazy," Carroll says. "But John Madey, the father of the FEL, stood up at the back of the room and told them they should fund me. They did." Peg Brickley (pegbrickley@hotmail.com) is a freelance writer in Philadelphia.

Patent Rights Wrangle Puts Law In Question

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Courtesy of Neil Brake, Vanderbilt University
MARK III TANGO: Duke is dancing in court with former professor to control use of a free-electron laser like this one at Vanderbilt University.