Speaker 1  0:00  
Good afternoon and welcome to today's webinar. Patent tips for enforcement of university patent portfolios presented by Autumn. My name is Samantha Spiegel, autumns professional development manager and I will be your staff host for today. All lines have been muted to ensure high quality audio, and today's session is being recorded. If you have a question for the panelists, we encourage you to use the q&a feature rather than the chat feature on your zoom toolbar. If you have a technical question for or comment, please feel free to use the chat. Should you need closed captioning during today's session, Zoom close closed captioning feature is turned on and available in your toolbar. Before we begin, I'd like to take a moment to think autumns online professional development sponsors Marshall Gerstein, IP and the Michelson Institute for our intellectual property. We appreciate your ongoing support. I now have the pleasure of introducing you to today's distinguished speakers. Dr. Don Draper is a patent attorney in the Biotechnology and Life Sciences practice group at Munia, Carlin and Curfman Don earned his PhD in genetics from Harvard and his JD from Georgia State University for university clients in the life science and biotechnology industries. Dr. Prevost patent experience includes therapeutic animal animal antibodies, recombinant protein therapeutics, RNAi therapeutics, gene therapy, human and veterinary vaccines and in vitro in vitro diagnostics. Prior to becoming an attorney, he worked at the CDC as a licensing associate with the CDC as technology transfer office. Warren Thomas is a member of the litigation practice group at Munia, Carlin and Curfman his experience includes enforcing and defending patent copyright and trademark rights and federal courts as well as challenging and defending patents across a variety of technology areas. In post grant proceedings before the Patent Trial and Appeal Board. Mr. Thomas has count also counseled clients in the acquisition and licensing of university IP portfolios. Before joining MCC, Warren started his legal career as a term law clerk for the US Federal Court district district court judge and worked as an information technology consultant and software developer prior to becoming an attorney. He earned his JD from Georgia State University and holds a BS in computer science and mathematics from the University of Georgia. Please join me in welcoming Don and Warren, we're excited to learn from you both today. And I will let you don take it away for our first introduction.

Speaker 2  2:24  
All right, well, thank you for that introduction, Sammy. Again, my name is Dawn pricer. And I am a partner in the life sciences group here at manye, Carlin and Curfman. And again, I'm also presenting with Warren Thomas today, he is one of the leaders of our litigation group here. And we are fortunate enough to work with over 30 different universities, clients. And we work in patent prosecution matters. And we work in patent litigation matters with university clients. So I see that, you know, we're fortunate enough to work with some of you who are online. But those of you who don't know, us or our firm, we are relatively young firm, about 10 years old, but we have grown into one of the largest IP boutiques in the southeast. So again, thank you to everyone who's able to make make the this talk today, what Warren and I want to cover in this talk. We're going to we're going to be going over university litigation and enforcement cases. So we're gonna be giving practice pointers for you for your technology transfer office. And we're gonna do it, we're gonna frame the discussion by talking about six different sort of case studies that are going to go over these different topics, right. So the first topic we'll talk about is litigation funding, this is a way to use third parties to help you fund your litigation. But what we're going to talk about sovereign immunity issues as they apply to certain universities, we're going to talk about every tech transfer offices favorite issue, and that's dealing with inventorship. And faculty disputes, we're gonna be talking about assignment issues, there is a recent case that everyone is going to need to be paying attention to, that they're going to need to go back and look at all their assignment language in all of their different contracts. We're going to talk about patent pools as a way for for patent licensing type enforcement, and then finally talking about high value technologies and litigation between different universities or patent interference disputes between universities. So that's, that's sort of what we're going to cover today. And so on the next slide, you know, over the past COVID pandemic, we've, you know, in our discussions with our university clients, there's continual pressure on technology transfer offices to generate revenue. And as we can see in the first bullet, right, those of us in tech transfer know them most tech transfer offices do not generate sufficient revenue on their own to cover all their operating costs, right? A handful do, but most don't. So the CO Big 19 pandemic has just just made budgets worse. Staff has been cut budgets have been cut, university enrollment enrollments have decreased for some universities, not for all universities. But this has led to a number of our clients being severely impacted by the pandemic. And so these budget pressures have, you know, it's been additional pressure on these universities, and specifically on tech transfer office, since they are able to generate revenue to help offset these budget reductions. And so this sort of pressure, combined with, I guess, universities comfort in in being becoming more comfortable with litigation, in addition, combined with some university litigation, where there have been large monetary amounts have made more universities to entertain the idea of, of litigation. And just on that last bullet there, I just put one example of one of these university litigation cases, right. This was the Carnegie Mellon University case from a few years ago, where the jury awarded 1.5 billion ultimately settled for around 750 million. There was also another recent case, involving Sloan Kettering, and Juno and kite pharma that awarded 1.2 billion, the Federal Circuit did reverse that one. So it remains to be seen what happened there. But right there, there is money, there are large amounts for certain high value technologies that can be had when litigation is necessary, right. So in the time of increasing budget pressures, and sort of the increasing pressure on your office to generate more revenue, we wanted to generate this talk for you to wait and give you practical pointers to help with the enforcement of your portfolio. And right, potentially, if you're headed toward litigation, or involved in litigation, giving you a couple important pointers. And in doing that, in the context of sort of six different case studies. So with that, I'll hand it over to Warren who will jump into the first case study here that involves third party litigation funders, as a means to sort of help you fund your litigation. Warren. Thanks,

Unknown Speaker  7:17  
Don. Yeah, so this, this first case, is just really kind of like a data point, if you will, in terms of an example of, of ways to bridge the gap between in terms of financing, paying for litigation, and litigation is not cheap, right. I think. It's the old adage, it takes money to make money applies in terms of monetizing patent portfolio. And, you know, up until several years ago, it was, the idea was that, well, you either just sort of bankroll your litigation as you go along, pay her attorneys hourly fees, all of the costs and expenses that go along with ediscovery and expert witness the costs and expenses, or you hire a contingency law firm, right. And then for they don't basically, they don't charge you anything up front, they fund the litigation with their own equity and sweat in it. And at the end, they get a really big cut of any proceeds that are produced. And there's lots of lots of back lots of quality law firms, quality attorneys who were in that, who have that as their business model. In recent years, litigation, finance companies have come along to help be an alternative to that, right, again, takes money to make money. They've got the money. They are companies that are financing and investing in litigation, investing in people's claims, not just in patent litigation, but that's certainly one of them. You know, if you think about like, private equity company that is going around buying and selling assets, that's exactly what these companies are doing. One of them is long for capital. In fact, they have a specific practice that they call their university initiatives. It's focused on partnering with the universities and one thing, we've just sort of reviewing some of their materials and talking to them, you know, they really view this their goal of investing and producing revenue as aligned with the mission of the university, right? It's going to generate additional revenue that you can put into r&d that you can put into students, right, that you've gotten valuable IP. And a lot of there's a lot of large portfolios, and they're not necessarily being utilized. Maybe you've got some exclusive licensees. Maybe you don't, what do you do with the stuff that's just sitting around? And so they view it as an opportunity to say, well, we're willing to invest with you and invest in you to help create additional value and revenue out of that And so in 2019 is an example UCSB, University of Santa Clara, University of California, Santa Barbara, they partner with with Longford capital to fund an enforcement campaign related to filament LEDs. They're basically a filament technology that goes into light bulbs. The one estimate I read was that the 2019 sales in that market are roughly a billion dollars. So you know, if you think about a, whatever the reasonable royalty is that they're asking for, you know, that's confidential. Obviously, I don't know what it is. But you know, anything, any kind of reasonable royalty is going to be a good chunk of dollars for that going back soon. UCSB, and UCSB has a website, where they basically say, Hey, we're inviting you to come look at our stuff. I'm looking at our patents and inviting you to take a license. And if you don't, well, maybe we will have to talk to you about your infringement that you're doing. But UCSB really points on their website even too long for its involvement as making it possible to assert IP rights. And they single out that they are not spending their university resources on litigation. So it's sort of a, if you're getting something but not have to spend something for it. There you go. What are they getting? Well, first thing they got was several lawsuits filed in district courts. And in the inner Trent International Trade Commission to try and bar imports of these products into the United States, I get several retailers, IKEA Walmart, Amazon target. And so they sue them for infringement of four patents. Since then, since 2019, the scope of the campaigns and expanded, we've added they've added additional patents against other retailers and suppliers and manufacturers, and even a second ITC action. That's a lot of work going on. And their law firm Nixon Peabody is a large law firm, for more, you know, traditional defense oriented firm, it's not one of these. The traditional contingency firms are smaller, maybe more nimble, they have the scale and the resources to be able to do these massive campaigns. And they've also, you know, have the resources to devote to the invert inevitable P tap challenges that are gonna go against the patents that are asserted. In fact, the defendants in these cases have had some wins as of late in just in earlier in November, and the ITC administrative law judge found that there wasn't any infringement. Right, there's risks in anytime you go into litigation. And I'll also point out that the P tab hasn't validated all of the claims of some of the patents. So there's not 100% Guaranteed upside. At the same time, UCSB has identified about 28 industry partners that they've publicly identified as licensees. So they have gotten additional licensees that they didn't have before. It's not costing them money on the front end, the investment company is making an investment, right for a share of the returns that are coming back. But it's spreading the risk out among the client, who's whose IP is it, you know, is in a sense at risk, the law firm, who is risking some of its time and money, but not having to bear all of the risks like in a traditional contingency, and then the investor who is accustomed to making bets on things that they think are may or may not work, right, they know that they're not going to win everything, but they think they're going to make enough to be able to move forward. So we just thought that was an interesting illustration of something that university tech transfer offices and their general counsel's office should be looking at and thinking about in terms of Wait a second, we may not have considered this before, but we you we would recommend you kind of keep your eyes open to it. In any case. So the next topic I want to talk about is, if you once you do start moving down the road towards maybe we're going to enforce some of our IP, you want to think about some of the issues that come up one of those, particularly for one of those for state universities. And they're and they're often the research foundations that are affiliated with them is state sovereign immunity. And what that is, is it isn't a concept that immunizes states and what is known as an arm of the state, like a tech transfer office, like a university or the Board of Regents that you're affiliated with. The States enjoy immunity from lawsuits, you cannot go at least by default unless the state chooses to waive it. A person can't go and sue the state of California for something that's just not how at least in a federal in a federal court. You cannot do that. And The purpose of that is to give dignity to the States, according to some of the Supreme Court cases and reasoning dignity in the states consistent with their status as sovereign entities. When we states joined the United States of America when they ratify the Constitution, you know, and each and every one when the time that it came along and ratified the Constitution, all 50 of them now, then they have sort of traded, you know, they kept their sovereignty, your sovereign entities, but then we're in a union of states that work together and cooperate in our federal system. So that's what sovereign immunity does is give some protection and dignity to that prior existing sovereign status. Right. So when a party decides to sue, generally, the sovereign immunity is waived at least so that right when the when the state is going into federal court saying, let's go, let's go we want to right or wrong, or we want to make a claim against someone for some wrong then, then the immunity is sort of waved. And in this recent case of the Board of Regents for University of Texas, against Boston Scientific, was an interesting case, because it it sort of illustrated a clever, very clever argument that University of Texas wanted to do to be able to choose where it was suing. There's a concept in, in legal practice, called venue venue is

Unknown Speaker  16:41  
the effectively the appropriate court to sue in. I live in DeKalb. County, Georgia. And if I, you know, have a get into a car wreck in my county, I can't go sue. In sue the person who crashed into me in Fulton County, Georgia, I need to do it in the cap County, Georgia. Typically, you one of the ideas is that you sue where the claim arose or, or something like that, under a recent Supreme Court case, in a TC Heartland case, venue for a patent litigation is going to be proper wherever the defendant resides, or has a regular and established place of business. And in this case, Texas, and its exclusive licensee, tissue, Jen wanted to sue Boston Scientific. They're Boston Scientific, they're not in Texas. And so there's not really a dispute, then you wouldn't lie in the Western District of Texas, where ut wanted to sue them. So what Texas said is well, it would offend the dignity of the state to require us to pursue Boston Scientific outside the territory of Texas, right? They used this their sovereign immunity as a hook to try to force venue in Texas saying, hey, all those Supreme Court cases and the 11th Amendment of the Constitution that says we're sovereign, well, then we shouldn't be able to sue in Texas, right. Sorry, not so much. The Boston Scientific, said no, no, that's not right. You can't do that. And the district court agreed with them. Ultimately, the Federal Circuit Court of Appeals also agreed that, that state sovereign immunity does not apply when a state acts solely as a plaintiff. They reason that the 11th amendment and sovereign immunity is more for suits against the state not suits by a state. So the takeaway here is that it was a very good try Western District of Texas for a plaintiff is thought to be a friendly forum with high judgments and speedy time to trial. So it was a good tactical move to make as a plaintiff if you're the plaintiff, but it was and then to say, Well, what's how do we get to be here? Well, let's argue that we are sovereign. So it was a good try, but didn't work for them. Another good try, I will say was that certain the some of you are probably familiar with the pen Trial and Appeal Board and the IPR process. The the challenge the scheme the Congress created to do Institute inner parties reviews of issued patents, sort of take them back to the patent office and get a relook at whether or not the claims have should have been granted, has been thought since it started in 2012, or 13. To be. Some people call them the death squad for patents. It certainly changes the game for defendants and it's a very common diff tactic for defendants in litigation to file inner parties review requests. With the patent trolls you Warren Buffett's app. So what happens when the state university or an arm of the state is the patent owner? Well, University of various universities, dating back to one, University of Florida Research Foundation, was involved in some litigation with a company called Covidien in 2017. And beginning with that case, and then in several cases afterwards, at the Patent Trial and Appeal Board, these are administrative law judges are not district court judges, they don't get confirmed by the Senate, like you read in the news. For you know, high level article three judges, district court judges and Circuit Court judges, but they're appointed by the director of the patent office. And so these, they're, they're administering engines, these judges had tended to favor and ruled in favor of sovereign immunity for states at the P DAP, effectively saying, if you are a state patent owner, you cannot just like you could not be drug into federal court to defend against a claim you cannot be drug into the background review board to defend the validity of your patent. And so that was sort of a big deal. That was a game changer when that was going on. Because even folks in our firm we're talking about Wow, in public university pen portfolios are have suddenly gone up in value. They have near bulletproof patents because it's a strategic advantage in litigation. So a licensee or potential licensee or a defendant, oh, by the way, you can't challenge the patents at the P tab. You can litigate it in the district court where we've sued you for infringement. But, you know, this avenue that's available to a lot of defendants, it's not available. It was somewhat short lived, because ultimately in this University of Minnesota versus LSI Corp case. Minnesota tried that same tax and Okay, well, you've LSI petition for IPR, Minnesota says, Hey, pizza, you need to dismiss these because we're immune. PETA have agreed in that case that the sovereign immunity applied, but Minnesota had waived it, according to the p tag by filing the infringement suits. So Minnesota appeals and says Now, Federal Court of Federal Circuit Court of Appeals, will you please put an end to this? Tell us we're right. And the Federal Circuit said actually no the holding of this case and ended the sovereign immunity defense to P tab for public universities held with state sovereign immunity does not apply to IPR proceedings. So again, it was sort of a close but no cigar worked for a little while. But that is not an avenue that is available anymore. The next example case dealing with sovereign immunity also deals with the interplay of a rule of civil procedure, and federal courts called dresses Joinder of cases. Just this case is a little bit complicated in terms of the setup, so I'm just gonna kind of walk through it real quick. Dr. Decker, worked for University of Texas, MD Anderson center. You noticed there's a lot of stuff going on with Texas, right. MD Anderson Cancer Cancer Center is where Dr. Decker worked and where he embedded methods for dealing with cancer treatments. Decker he later moves from the University of Texas, MD Anderson center to Baylor College of Medicine starts working over there. Meanwhile, Jen Sedex through an assignment and through some other deals becomes the exclusive licensee of Decker's patents, outright Decker, the University of Texas to then exclusively licensed to genetics, genetics, Baylor and Decker's were practicing the same stuff that Tucker was doing it in the Anderson. And so genetics ends up suing them and some another involved party and names University of Texas as the patent owner as an involuntary plaintiff. And so, Texas then moves to dismiss and says Don't drag us into this lawsuit. We're we don't want to be here. We don't want to get involved in this fight. And Baylor the defendant in the case said then ask the court to dismiss the case under the rule 19 Because University of Texas as still the patent owner a record is necessary to proceed. And so what does it mean to be required and necessary to proceed? The idea here is that the rules are set up to consolidate claims and consolidate parties to try to provide a complete effective relief in a single action. And so under the terms of a license Between UT and genetics, it was not really disputed on appeal that UT retains some substantial rights in the assert in pens that required Texas to be joined under what's shown here as rule A 19. A 19. A says when you're required to join, and when a court, if you're required to join can order a party to join, I don't want to be in this case, I don't want to, as my best heading here says I don't want to join this party. But there's provisions that say, doesn't matter if you don't want to, we can join you anyway. And but if you can't, if it's not feasible to join that party, then the second part of rule 19 tells the court what factors govern whether or not the case can go on without, without you, in this case, cannot go on without Texas and the factors you look at are things like whether a judgment rendered in the person's absence, Texas absence might prejudice, the parties or prejudice Texas, the extent to which you could lessen prejudice, whether a judgment rendered without that party would be. And here, a majority of the panel was split to 212, or three federal circuit judges on a panel and two of them ruled that Texas is sovereign immunity barred its Joinder under the first part of the rule.

Unknown Speaker  26:30  
Ordinarily, if it's a private plane, it's a patentee, who refuses to voluntarily join can often be added or joined in voluntarily as a plaintiff. But Federal Circuit says that that does not extend to sovereign states. And so the the idea here is that the it's not just suits. I think we said this a minute ago about the other case, it's not just suits against the state. But the court can't order Texas to join as an involuntary plaintiff either. Maybe it's all about the idea of the federal power, the courts being in boat, and Texas was fighting against it saying we don't want to be involved. And so the court said that it had to honor that. Now, I mentioned that it was a little bit split. There's a graphic that was posted on the patent videoblog sort of charted out how the judges how the judges were going to ruled on this to kind of come to the the result that they had. So then, if Texas could not be feasibly joined, which is why judges O'Malley in Toronto said, because it was immune. Well, what should we do, should the case proceed, or should the case end, and judges O'Malley and Newman, both agree that the case should proceed. And the reason that he said that is because looking back to some of the binding cases from the Federal Circuit, that what you're really looking at, as are the interests of the licensee in the license or identical so that the licensee can step into the license or shoes, the patent owner shoes and protect its interests fully. And one of the key facts here was that there was a field of use was defined as everything in the license. There were some rights, as I said, there were some even the courts agreed that there were sort of some bundle of sticks that Texas retained. So that it was so that genetics didn't have enough of the rights to be tantamount to an assignment that it could sue on its own. But nevertheless, the field of use was for everything. And so the majority of the panel said that that was enough to block to or sorry, that was enough for Jen Sedex, to be able to proceed and protect the interests. So one of the interesting questions here, I think is right, what would happen if there was a field of use limitation on someone's work? Right, what what might you put into a license agreement? To be able to if you if you want to be able to exert more control, right, what would you put in there, and because of the fractured nation, we have the opinion, and it's a little, it's a little fuzzy, but that's one place to start is that you might be able to address that. So it's the Taiko another practical takeaway, though, is when you're doing your exclusive licenses, then you really need to think carefully about well, do we want to permit our licensees to assert patents without us being involved? Do we want to not be a party? How much control do we want to have over that in those cases? So the next topic, as Don said, is going to be mentorship and mentorship happens all the time. Right these in university situations in particular, you've got lots of people working together. They're collaborating. And that's happening every day. So what do we do? How does that affect the patent rights? Well, the pen, section 116 of the Patent Act says that when an invention is made by two, one or two or more persons jointly, you apply for the patent jointly. So it's collaboration. So what is we're going to talk very briefly about what that doesn't mean, what it does mean? It does not mean this is a spoiler is actually directly from the statute doesn't mean they need to physically work together. They don't have to work at the same time, they don't have to do the same type or amount of contribution. And then some of the case law says that there's no minimum quantity or quality of contribution required to be an inventor, a joint inventor. So well, what does it take them to be a joint inventor? Well, first of all, you got to invent. So invention is, as you may know, is conception, less reduction of fraction practice. And of these two sort of components are traditionally thought of as can as invention. Conception is the more weighty one, it is the touchstone and of inventorship. And what that means is that the formation in the mind of the inventor of definite impermanent idea of the complete inoperative invention, there's a lot of loaded language in there. But it really means that like, what is the person thinking of, and then the cases have have instructed us, both as patent practitioners trying to advise you getting patents and and your offices and sort of collecting the information that what we want to look at, really, is the contribution, right had do the joint inventors contribute in some significant manner to conception or reduction in practice, again, with emphasis on conception? And did you make a contribution, that's not insignificant, right. So again, significant significant, those are both of those prongs here. And this is important to get it right, because there's big consequences. Failure to name the right vendors can render a pen invalid. And section 256 allows the person who claims to have been improperly omitted from the list of inventors to bring a cause of action to correct the inventorship. And what that means. And then the implication of that is that there's an ownership. Joint inventors are co owners of equal and undivided interests. So if you've left someone off of the inventor list, and then they later get added on, well, now you don't own even though you may have gotten the assignments from all of the people in the lab team to assign to the university or the reef, or the tech transfer arm of the university. Right? If there's someone else out there, outside the university, you don't have gets added. Now they own the patent as well, and they can license it. And that's a recent example of that is this case of the Dana Farber Cancer Institute and oh pharmaceuticals. Dana Farber is filed suit in 2015. To correct inventorship on six patents that were assigned to Ono. And they relate to groundbreaking work in cancer immunotherapy treatments. The named inventor on the patents Dr. Han Joe of Kyoto University, who won the Nobel Prize in 2018. Related to this to this work, that he and his medical school and his Japanese collaborators did. But as it turned out, he had worked with done some work and some, some sharing with a Doctor Freeman, who was at the Dana Farber Institute, and a doctor would have the Genetics Institute along the way, in fact, the Federal Circuit in this opinion points out that Hanzo actually credited Dr. Freeman as a major collaborator in his work during his acceptance speech, which is, you know, maybe not a not a great look, if you're if you're trying to say many of these guys weren't involved. The the collaboration, it was, is complicated. And I'm not going to get into all of the details of it. Except suffice to say that in the courts analysis, and I think is instructive in that it is very detailed, really stepping through what they did, how they work together, what did they share the data, they share, they hold on, Joe shared a confidential draft of an article that he was writing and then Freeman and wood shared a reagents with Han Jones lab in terms of looking for the PD one ligand that they were that they were all investigating in terms of its relationship to cancer, and you know, it's detail. But it's also that's that's what you do the inventorship issues are always going to be closely closely tied to the facts of what did they do? When did they do it? And again, back to that first question, and the in the first line, How significant was it to what the inventors were doing? So, Freeman, it would, or sorry, oh, no argue that Freeman would contributions were too far removed, because Honda was already doing this work. And Han Jo's lab actually came up with some in vivo data in October 2000. That actually showed Oh, my gosh, this works. And this T cell receptor, PD one is, is involved in suppress in in cancer. And so that wasn't sort of proved out by Freeman invalid. They were sort of doing some of the other stuff and tools and analysis to get there. And the court said, Well, now you don't need to need to contribute to all aspects of the invention. And the fact that you weren't there for the sort of the final coup de gras of the experiments doesn't negate their overall contributions. And the data itself sort of proves it works. Well, that's really reduction to practice. And that's not

Unknown Speaker  36:24  
that's not the consumption part. As we said, a moment ago, consumption is more more weighted than the reduction of practice. Another interesting fact about this was that Freeman and Wood had actually also filed a patent application a provisional application in 1999. That left Hanzo off, right, I guess, maybe to be, to the extent it's not clear Hondros patents did not name Freeman or wood on. As inventors he listed several people he was Honda was first. But Freeman wood were left off completely. Those were 2002 dated back to 2002. Japanese patent applications. Well, if you're reading this story, the reason probably is because hydro got really mad at Freeman and wood, because they did kind of the same thing and left him off and application in 99. There was some dispute right around the same time in 2000, when these groundbreaking discoveries were taking place, and so on, Joe left them off. And one of the arguments that they raised on appeal was that the 100 patents were actually issued over the 99 provisional application, you know, effectively, they were taking a position that Honda was that they had Freeman or woods contributions weren't novel or non obvious. And the court said, no, no, that's you're mixing apples and oranges here. Joanne mentorship doesn't depend on whether the invention is novel or non obvious over a particular individual's contribution. Again, it goes back to is this a significant contribution? You don't ask for the contribution itself is obvious, or another's inventors contribution is non obvious over what I do is just did you know if I'm the aggrieved inventor, you know, is my contribution significant? Back to my earlier point, that's very, very fact intensive, depends on what it is. And then another issue that came up here was that freemen had published an article effectively put some stuff into the prior art, and oh, no argue that that can't qualify as a significant contribution, because it's public. And the court said, Now, you're asking for a categorical rule, courts hate the hate categorical rules, like these squishy factor tests, significance, whatever that means. And they said, in particular, that the cutting off of contribution, because of publication would ignore the realities of collaboration is typically it spans a period of time involves multiple companies, multiple contributions, sorry, not multiple companies. And, you know, the takeaway here is that they are the result is that the Federal Circuit, affirmed the district court, there was no error in holding that Freeman, which should be added, as joint inventors. And so now Dana Farber is a co owner, and they are out trying to license the technology to additional companies which Ono and I think it was Bristol Myers, was its us was a sort of licensing and manufacturing the product selling the product in the US and other places. But anyway, so you've got multiple parties now that that a potential licensee can go to for getting hands getting their hands on this technology. It's a great example of researchers around the globe doing great, interesting life saving work and creating joint inventorship machines at the same time. And so, you know, we'd say when you are thinking through invention In disclosure forms when working with your patent counsel on, you know, getting the the documents pulled together. Really, you want to ask Who else have you been working with? Who are you getting data or necessary components from? Where did this stuff come from, and not talking about like off the shelf ingredients or pieces of a component. But you know, somebody makes something great. Like here, the reagents were specific to the techniques they were using, were specific to the goal that they were all working towards. And those really detailed questions complicate things. But like I said, the stakes here are pretty high. And so now I'll turn it over to John to talk about these assignment issues.

Speaker 2  40:46  
All right, thanks, Warren. So as Warren discussed, so inventorship issues are issues that we see all the time. I mean, this is just something universities continually deal with the sort of joint, the collaborations and who's an inventor and who's not. So again, really just just an important topic that sort of jumps into our next topic. Another sort of technical issue that universities are sort of always getting involved in in litigation, is litigation over over different assignment language. So there is a recent case called Omni midsi versus Apple. So this came out a couple months ago in August Federal Circuit case today, one federal circuit panel decision. And I just want to start off with the take home practice pointer here, and we'll get into the details of the case, we'll get into the details of the language. But the take home practice pointer is to go back, look at all your assignments, look at all your intellectual property contracts, your your employee contracts, your bylaws, anything that relates to the obligation, that faculty member just signed to the university, and make sure you're using present tense, activating language in those assignments. And as you'll see from this case, do not use the language shall be the property of in in these assignments in any of these other documents in the university bylaws. And so now we'll sort of go through the the depth again, that's the take home of the case, because it really is important for everyone to go back and sort of look at all their assignment language. And now sort of go into the facts of the case. So the University of Michigan is not in the case, this is Omni midsi versus Apple, but it does involve interpretation of the University of Michigan assignments and bylaws. So there was a University of Michigan inventor, he had taken a short absence of leave in in that absence of leave there, followed a couple of patents, it assigned those patent rights over to Omni meds med side. The university, of course, asserted that it should be the owner of these patents that the inventor had assigned to on the med side. But in the meantime, Omni med side brought a patent infringement suit against Apple. And this is the technology involves several health sensor patents. And sort of as Apple's defense to this, to this litigation of this lawsuit was that on the med side didn't have standing, because they didn't actually have the patent rights, and that the patent rights had been automatically assigned a sign from the inventor to the University of Michigan. And so that's sort of the background of this case, right? The the the inventor hadn't filled out an invention disclosure form hadn't, you know, hadn't hadn't signed any formal assignment to the university. So you're sort of relying on its automatic obligation. And, and so, before we get to the outcome of this case, just want to jump into sort of the the Stanford V Roche case, which which many of you in tech transfer will know, from about 10 years ago that went to the Supreme Court, but some of you haven't been in the field quite as long won't necessarily know this, but but it's a similar case. So went to the Supreme Court involving the language that tech transfer offices that universities used in their assignments. And so in the Supreme Court case, you know, the first part of the case was that the the justices affirmed that the common understanding of the US constitutional law was that inventors originally own their inventions, right. So those are the rights of rip, you know, vest in the inventors. Anything after that the contractual obligations to sign those rights to other third parties, right, that's all secondary. So in this case, and again, not going into too many of the details, but looking at the language of the the assignments in the employment agreements. The Supreme Court held that the language in the Stanford employing agreement that they had the the researcher the inventor sign said the language they use was agreed to a sign and what the Supreme Court said, Well, this is merely a Promise to assign your invention rights to Stanford at some undetermined point in the future. Right? In contrast, the the inventor had gone off and worked with it with a company. And the language in the assignment from the inventor to the company use the following language will assign and does hereby assign, right. And what the Supreme Court found was that is present tense activating verb, it automatically created that assignment from from the inventor over to the company using that language here by a sign. So, right, so now, sort of next slide back to the details of this case. Warren Next slide. So, back to this case, which came out a couple months ago, and, and sort of why everyone in tech transfer needs to revisit assignment language again. So, in this case, on the med side versus Apple, right on the med SCI is arguing that the assignment language that the university used was an agreement sort of like this, the Stanford agreement was an agreement to assign in the future and not at present assignment. So I've included that language from the bylaws here, right, the the employee has signed a contract which say you would abide by the bylaws. This is the language in the bylaws, that deals with that intellectual property assignment. And so just without reading the whole thing, it basically says the patents that are the result of the research is education activities, that you know, of the university staff, all that shall be the property of the university, right. And so if you look at that italicized language, that's the that's the whole focus of this case is the interpretation of this language shall be the property of so contrast that with the second bullet, where we're talking about the language that University of Michigan had used in their invention disclosure, right, if the inventor had signed out and signed an invention disclosure, right, that language they use, there is i We hereby asylum. So again, in the invention disclosure form, using that present tense here by assigning our rights, right, the problem was, because the inventor was on leave, and because he had already assigned the, the patent the pens over to the company, he hadn't signed any event, he hadn't filled out an invention disclosure form, he hadn't signed any assignment. And so then it was up to the the language that was found in the university's bylaws, as to whether there was an automatic present assignment with the language that was there. And what, again, this federal circuit found this August was that that language shall be the property of the university did not create an automatic assignment. And so just next slide. The I mean, we already talked about the practice pointers, but really, these cases spell out very specific things that that University Technology Transfer professionals can look to for, for, you know, assignments, and avoiding having to go back and litigate over these assignment issues. And they, they do come up in cases all the time over incorrect assignments over assignments that are not done at the right time. That, again, there's just assignments that are still not using the right type of language. So your first practice, one is just used that magic language that the various courts have discussed, they've already sort of blessed. The employee assigns, does hereby grant and assign hereby conveys transfers, assigns, does hereby grant you know, that language is all good that the court has already looked at that said, this is, you know, gives you a present automatic assignment. And write things to avoid that bad language from these cases. That, again, it's just it's just merely an agreement to agree to assign in the future, right shall be the property of will assign agree to assign. So right from this talk, you know, everyone really does have a homework assignment to go back if you if you haven't done it, when this case came out a couple of months ago, to go back to, you know, to all the language that you have in your assignments in your, in your employee contracts in your university bylaws, and just make sure you've got this present tense language. And so, next slide

Speaker 2  49:43  
what so what are what are the next steps for this case? Very, we've given you the practice pointers, but, you know, where are we in this case? Is this is this language gonna hold up? Is it gonna get reversed? Well, Apple did file a petition to the Federal Circuit for rehearing. Upon bonk, this petition was denied just just over a week ago, in in that petition for unbox, the autumn did file an amicus brief and Autumn did support Apple asserting that this language shall be the property of should be sufficient language. Again, this was language that University of Michigan had in their bylaws, it's likely that other universities are using that same type of language as well. So, you know, but at this point, the petition for rehearing on bonk has been denied. Really, that just leaves the Supreme Court. And given the chance of having the Supreme Court here, your appeal, the chances that anything is going to happen here is is very unlikely. So this line, this sort of language that the Federal Circuit has rejected, is likely to mean this, this is this is going to stay. And so again, homework assignment, go go out, look at all your contracts and see where that leads. So next topic that we're going to cover today is looking at patent enforcement pools as a way to enforce your patent portfolio as a way to, you know, provide an enforcement mechanism for your different technologies. So I'll give the one example here to discuss these patent pools. And this is one that I formed earlier this year in January. And it's called the University of Technology licensing program. Right. And patent pools are basically a way to bring all your pants together in an efficient way to disseminate and license those patents. Normally, we would license them sort of one at a time to one company. This, this is sort of a way to bundle those together licensed in multiple companies at a time. So and I've listed here, the 15 universities, so you can see who's the particular 15 universities involved here, I see my alma mater, Harvard here, I see University of Michigan, we just talked about in the assignment case, University of California, Berkeley, which is involved in other litigation cases. So you know, universities that are involved in litigation, and you know, are also interested in sort of enforcing their patents and coming up with ways to license and enforce their patents. So next slide. The, these patent pools can cover different things, right? In this case, they they're covering specific technology areas, and that's sort of the way they're grouping them to begin with. So for example, the technology areas they're looking at, in this first pool, autonomous vehicles, connectivity, you know, sort of the Internet of Things, power management, signal processing, things like that. Big Data, Data applications and data storage, right. So these, these are sort of the focus of the initial patent pool, the PAM pool says they are going to go after a future, you know, they have ideas for future technology areas. So So again, depending on how the the first set of technologies work, and how that goes, you know, remains to be seen how, how it will go into the future technology areas. So on the next slide, I'm just talking about the So so how does this actually work? What you know, what are the mechanisms? What are what what are these universities doing? So again, as a patent pool, looking at certain technology areas, bringing in the patents from the different universities into into the patent pool, and at this point is going to be a collection of, of patents from different universities. And the idea is to non exclusive licenses, right? So multiple patents, being licensed out to multiple parties makes sense to license that on a non exclusive basis. So again, in contrast to you know, what we normally do when we have sort of, you know, a high value or a licensed technology, which makes sense to use the traditional one, one technology and one exclusive license, right? So this is just sort of a different way mechanism to try and bundle these other types of technologies in order to get them out there. And so you can you, the people who would be licensing this, they can license one from from the patent pool, they can license a bundle, again, the way they've got it broken out into different technology buckets, you can license as many as you want. And that's that really generates how the the ultimate licensees will how much it will cost to the licensee, depending on how much they want to license. And the sort of, you know, some of the big things about this is the enforcement via the UT LP The University technology licensing program via licensing negotiations. Right, all that's done, you know, not not by the universities, but by the the the UT LP itself. And, you know, again, they'll accept people coming to them to do the license negotiations. And certainly you can envision that there'll be going out to some people who they think should take a license, and then should license negotiations not happen. then you have a law firm already involved. Or you know, you can, you can then do and more talks about this at the beginning contingency fee litigation, using litigation funding as a way to, to fund your litigation through this pool. So on the next slide I just talked about, again, I want to go through the pros and the cons of, of using these pools. I'll go through the cons first. So there are antitrust concerns, you know, that we're dealing with patents and bundling them together does tie up rights. But the DOJ, the department justice did agree in January that, you know, this program was fine on antitrust grounds. There is potential negative publicity, of course, the universities are always worried about negative publicity. Some people would, would say, this is sort of like a patent troll, what what you're doing is bundling up these rights and sort of trying to extract payments from from companies. But But again, universities are not commercial entities, this is sort of what they're doing all the time and are used to it. And you know, it's a model that's well accepted. So, you know, maybe the negative publicity is just that you've got 15, universities all collaborating in a certain area. And, you know, and trying to get payments, from larger companies, for certain technology areas through this patent pool, there is an administrative burden, there's a time investment from the university. You know, usually there's buy in from different people. So that will take time to do there are costs involved with litigation should, should you decide to that you want to go to litigation. Again, some of that can be offset by contingency fees, and using litigation funders, things like that. And there's potential for low revenue patent pools in the past that sort of had a mixed experience. So on the next slide, I'm going through the what are the what are the pros of, of using, using something like this, like a patent? Well, again, are these are these necessarily your most important technologies that lend themselves easily to licensing not not likely, right, these are, these are going to be your major issue patents, things that just haven't worked for, you haven't gotten like them licensed out yet. And so you can contribute them to the pool, and leverage the synergy in the assets of all the different universities in one area to sort of be able to move that along. And in that will help you recover some patent costs, or at least patent costs going forward. It's also a good thing to lead you to collaborate with other leading universities, and create new connections, expand your relationships, as a tech transfer office with industry members in specific technology areas, there is some financial upside, it could be significant, or, again, you know, even if your particular patents the way the the pool is set up. Even if you don't like licensing patents out from from your university, you are supposed to receive some revenue, you know, even if your own are not licensed out. So that those are just some of the some of the things to think about. Again, you know, if you've got certain technology areas, certain technology, if your university has experienced in certain areas, and you want to collaborate, again, with other universities in your area, or a specific technology area, maybe a patent pool does make sense for that. Next slide, Warren. So the final topic, and again, I think in the sake of time, we're at the one o'clock time. So I'm gonna sort of skip through a lot of these slides. But just just so you know, that this is, so the CRISPR interference between UC Berkeley, and the Broad Institute, we do have that information in these slides. And again, we're always happy to go through these things with you later as well. But they're in your slides if you want to look through them. And you know, if you have questions later, we're certainly happy to go through that. Just one last takeaway on the practice pointer slide.

Speaker 2  58:55  
Ready, the only quick practice pointer I'll give you from from the CRISPR interference, they're all here on this slide. But the second bullet point, when you when you know you have high value patent patients or when litigation is expected, think about accelerating your patent prosecution. It was really important here. And you know, we have good success when we when we do that. And we do recommend it when you're dealing with high value pan applications, Oregon where litigation is expected. So there was also assignment issues, but we won't we won't go into that. We'll just sort of wrap it up on the on the next slide. This is this is just, again, the topics we cover today to be to go over, you know, from from third party litigation funding to patent pools, and then just the specific topics about inventorship assignments, right, all these things come up in litigation. And so hopefully from these, you've at least taken a few pointers. And here's a final slide was with those pointers, just so that you have them Right litigation funders can help you finance and enforce and monetize your patent portfolio. Sovereign immunity, it's really a shield, not a sword to be used inventorship issues always occur. So deal with them early and think about the contribution of collaborators go back and review, review your assignment language, it definitely is worth it in, in light of this case, and many universities are probably still using the wrong language. And patent pools can be a way to wanting to license things that you haven't been able to license. And then finally, for those high value technologies, you got to file early, you got to file often accelerate your prosecution complete your assignments. And again, patent pools are another way to in sort of these complicated areas to, for parties to all come together and sort of figure out a way to cross license to combine patent pools, and sort of as a way to get to a settlement. So with that, I just want to conclude the talk. Just want to thank you all for joining us today. We're certainly available for questions. Now. While we wait for anyone to type in any questions, I think those are gonna be typed in the q&a bar below. I just do want to plug the from this last slide here you can see the autumn 2022 meeting is going to be in person in New Orleans. So we will be there. And we hope that you all will be there as well. And so, you know, we're always happy to continue these conversations there, you know, maybe on Bourbon Street, or maybe over a plate of venues. But hopefully, we will see some of you there. And again, we're happy to talk sooner than that as well if you have any burning litigation questions, but with that, we'll end it. And if there are any questions, we're happy to take them. Thank you.

Speaker 1  1:01:54  
Fun, Warren, thank you both so much. We'll give folks a second to go through and submit questions. But I know you gave everyone a lot to digest and think about so I'm sure other questions may come up, or you've just already anticipated everyone's question needs, which is always a win. So while we wait for a couple of those final thoughts to come in, I will start us wrapping but again, if a question pops up, we can take it we do have the time. So just thank you both so much for such an informative discussion. That last slide with those final takeaways I know will be a huge help and resource for folks as they revisit the content. And as a reminder to everyone a recording of the webinar will be available for viewing on the autumn Learning Center within a few days probably before the weekend. And a handout copy of these slides will also be included Baris, you'll have done and Warren's contact information, and also all of those resources referenced throughout the presentation. And please remember to complete the evaluation which will open when you close out of this webinar, which will help serve your needs in the future. We absolutely appreciate your feedback in advance. And as Don mentioned, last but not least, I was going to plug registering for the annual meeting. So thank you for beating me to that Dawn, where I'm excited to see everyone in New Orleans in February. It's just around the corner. So don't forget to get your registrations in early and we look forward to seeing everyone there.

Unknown Speaker  1:03:19  
So like an easy sell this year.

Speaker 1  1:03:22  
I think so too. We're excited to be gathering in person. I don't see any questions that have come through. So I'm happy to give everyone a couple minutes back in the day unless Don or Warren, you had any parting thoughts you wanted to share any last lightbulbs or whatnot. I know we had that closing slide already, but

Unknown Speaker  1:03:40  
from age Thank you for having us today. Thanks for your time for the attendees.

Unknown Speaker  1:03:45  
All right. Thank you guys.

Speaker 1  1:03:46  
Thank you all so much, and we hope everyone has a great rest of the afternoon. You too. Goodbye. I think

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