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Roche files Supreme Court brief

Biotech company Roche filed its opposition brief last month in Stanford University v. Roche Molecular Systems, et al., the intellectual property case that Stanford and MIT have both asked the Supreme Court to hear. Download it from our website at http://tech.mit.edu/V130/N23/scotus/05_Roche_Brief_In_Opposition_To_Cert_Petition.pdf.

MIT is not a party to the case, but has filed an amicus curiae, or friend-of-the court, brief. Forty other research institutions have signed on to two other such briefs. These amici are concerned with the impact on their ability to license patents.

Roche’s reply brief, filed May 26, contends that not only is Stanford’s petition “meritless,” but also that Supreme Court review is unlikely to change the outcome of this particular case, because a lower court found “the patents invalid for obviousness, a fact Stanford does not even mention.”

MIT’s general counsel declined to comment on Roche’s brief.

The outcome of the case could determine who owns the patents to inventions that come out of federally-funded research. In 2005, Stanford sued Roche for patent infringement over technology to detect HIV levels in blood using PCR, the polymerase chain reaction. Roche claims that it is a co-owner of the patent because one of the researchers transferred his patent rights to a company that was eventually bought by Roche.

MIT’s brief in the case focused not on the particular ownership of the HIV/PCR patent, but rather on the question of university’s patent rights in general when government funding is involved. Roche’s brief contends that the Bayh-Dole Act, the relevant piece of federal law, “does not alter a co-inventor’s right to assign his shared interests in an invention.” Roche also says that “despite numerous requests, Stanford has never produced the actual funding agreement with the federal government that allegedly bears upon the inventions at issue in this case.”

Stanford’s petition asked whether a university’s property rights “can be terminated unilaterally by an individual inventor through a separate agreement purporting to assign the inventor’s rights to a third party.”

When a party asks the Supreme Court to hear a case, four of the nine justices must vote in favor; fewer than 100 cases are selected from nearly 10,000 petitions.

Stanford’s petition was filed on March 22 of this year. Amicus briefs were filed in late April by the Wisconsin Alumni Research Foundation (WARF), the Association of American Universities (AAU), and MIT. WARF’s brief was joined by 10 other institutions, including the University of Michigan. AAU’s brief was joined by over 30 amici, including Harvard, Yale, CalTech and CMU.

Roche’s brief was originally due on April 26, but it obtained an extension from the Court until May 26, according to Adrian M. Pruetz, counsel for Roche. All of the filings are available at http://tech.mit.edu/V130/N23/scotus/.

Roche, a major biotechology company, is partly controlled by Swiss pharmaceutical giant Novartis, which owns 33 percent of Roche’s voting stock, Reuters said. Novartis has a major facility just up the street from MIT.

An earlier version of this article ran our website on May 27.