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« Court Report | Main | Enzo Biochem, Inc. v. Applera Corp. (Fed. Cir. 2010) »

April 12, 2010


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So, no tragedy of the "anti-commons"? Could it be instead a "commondey of errors"? (Sorry, couldn't resist the play on words.)

The fear about Madey is greatly overblown. An interesting case for some interesting law, but basically a "food fight" between a university and a disgruntled former university director/professor. And Duke could have protected themselves and avoided the huge court costs they incurred if they had bothered to get an appropriate agreement with Madey.

What Madey did establish is that you can gain immunity against a patent infringement suit if you carefully draft your federal grant to come under the "contractor defense" provision of 28 USC 1498. Universities should may be forget about arguing for the "research exemption," they've already got a great defense in place for any federally-sponsored research.

Thanks for drawing our attention to this. When the Madey decision came out, I speculated that the suit was primarily personality- rather than commercial-driven, the implication being that the decision was not a harbinger of numerous patent infringement suits against universities and their researchers. I don't know if this article confirms my suspicion, but it's certainly good news.

FYI: The two Monsanto patents cited as being involved in a lot of litigation have nothing to do with mammalian stem cells. They are directed to vectors and gene for the transformation of plant cells to yield herbicide resistant plants. I was working with Monsanto/DEKALB in this area when these patents issued.
Thought you might want to know.
Warren Woessner

Madey was a bit more than a "food fight" between cranky rivals. The patented technology at issue was not the *subject* of the research, but rather a tool used in research. To those who make a living developing and selling research tools and instrumentation, that's an important distinction.
Even under 271(e)(1), it remains to be seen how far the exemption can be pushed. Merck v. Integra might be pointing the way ... or it might turn out to be a stop sign.

Dear Warren:

Thanks - and in addition, of course, these patents have been asserted against farmers who violate their agreements not to replant using saved seed. Generally following the point that litigation does not seem to be a vehicle for inhibiting basic research.

Thanks for the comment.

Kev, anticommons are always tragic. Very tragic.

"Madey was a bit more than a "food fight" between cranky rivals."


As I explained, the Madey case has provided us some illuminating law as it relates to defenses for federally sponsored research against patent infringement and in (again) construing the so-called "ezperimental use" defense (also referred to as the "research exemption") extremely narrow. But for the litigants involved, it was essentially a "food fight" by a disgruntled former director/professor (Madey) who took revenge against his former university (Duke) "hey, those machines you're using in my former lab are covered by patents I got from another university (Stanford)." If don'te believe me, go read the facts in the Federal Circuit opinion.

Both Madey and Duke could have saved quite a bit of money by simply settling this suit at the outset (as eventually happened after who knows how much was shelled out in attorney fees by Duke sending those patented devices to Madey (now with a university in Hawaii). But then again, if they had settled (or if Duke had gotten an agreement with Madey over use of these patented devices as they could have and should have), we wouldn't have had all that wonderful law I just mentioned.

Dear David:

thanks for the shout-out re: Colbert - pretty funny.

I am reading Bob's case studies now and will post on them. Since they are contrary to every other study to date, you'll pardon me if I'm skeptical (at least until I've read the original research),

But I respect Bob's scholarship, so maybe he'll surprise me.

Hope you are well.


This whole analysis is very muddled and not about the anticommons at all.

As Becky Eisenberg points out in her thoughtful re-examination of the "anticommons" hypothesis in Univ Houston Law Review, one would not expect the anticommons problem to present itself in litigation, and it would not be found in academic-industry conflict; indeed litigation is a poor measure of its impact. The postulated problem of anticommons is transaction costs in aggregating sufficient rights to proceed with innovation. Measures would be about the difficulties in such aggregation (e.g. search costs for identifying requisite IP, failure of in-licensing from academe to industry), not litigation (which is most apt to be a fight over competitors both of whom have made it to market--the point of anticommons is you don't get to market in the first place).

Universities would be an input to subsequent uses, and licensing is a much more direct measure of it, and difficulty licensing the prime measure.

Litigation is thus a crummy measure of the wrong thing. Moreover, it is the downstream users who face any anticommons problem and it would materialize later rather than earlier in the value chain.

Walsh and Cohen's very useful and persuasive survey work is valuable to know, but it's not a very direct assessment of the anticommons problem either. Their work informs the problem of "blocking" patents in academe, not the anticommons (which is conceptually the opposite of blocking). Walsh and Cohen basically find massive and pervasive infringement combined with obliviousness to IP among scientists. The obvious conclusion is *not* that IP is important and good for basic science, but that it is pretty much irrelevant and probably does not do much harm. If it did any work at all, it would probably be obstructive, and the happy finding is that no one pays any attention to patents when they are doing science, thus mitigating the theoretically possible adverse effects. The policy solution would be research exemption in US law, although the absence of litigation does suggest that this problem is not severe, and may not warrant legislative remedy.

Metrics of litigation are interesting and useful, but they are not about anticommons or even about blocking (because blocking will usually be detected not by litigation but by enforcement letters and foregone innovation--again blocking patents won't generally cause litigation, which arises among rivals both of whom get to market). Indeed, it's not entirely clear what litigation measures in patent theory except propensity to sue.

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