Renting space on the shoulders of giants: Madey and the future of the experimental use doctrine.

• Author: Saunders, Thomas
• Position: Case Note

Madey v. Duke University, 307 F.3d 1351 (Fed. Cir. 2002), cert. denied, 123 S. Ct. 2639 (2003).

The experimental use doctrine in patent law protects alleged infringers who use patented inventions solely for experimental purposes, such as testing whether a device functions as claimed or re-creating a process to observe its effects from a scientific perspective. (1) The judicially created exception traces its lineage back nearly two hundred years. (2) Although the exception has always been construed narrowly, it grew narrower still in October 2002 when the Federal Circuit issued its opinion in Madey v. Duke University. (3) Madey reformulated the experimental use doctrine and cast considerable doubt on its continued viability as a defense in patent infringement cases involving universities. As a result, university researchers accustomed to standing on the shoulders of giants by studying patented technologies freely may now be forced to rent space on those shoulders instead. (4)

This Comment argues that the Madey court erred when it characterized university research as driven by a business interest in competing for prestige, students, and research grants. Not only does this view oversimplify experimental use defense by causing it to turn on the status of the defendant rather than the nature of the contested use, but it also undermines the balance between innovation and access that lies at the heart of the Patent Act. The Federal Circuit should have instead crafted a more nuanced experimental use exception that protects educational experimentation on patented inventions. Such a rule might not help Duke in its dispute with Professor Madey, especially if the record on remand confirms that Duke was experimenting with rather than experimenting on Madey's invention, but it would allow future researchers to continue testing and teaching about patented inventions without fear of being sued.

I

In 1997, Duke University removed physicist John Madey as director of the free electron laser research lab he had founded. Madey resigned from the faculty and eventually sued Duke for patent infringement for continuing to use several pieces of equipment Madey had invented and patented. Duke moved for summary judgment, and the district court held that Madey had failed to demonstrate that Duke, as an educational institution, had a commercial purpose for using the patented equipment. (5) Madey appealed, and the Federal Circuit reversed and remanded. The Federal Circuit determined that only a "very narrow and strictly limited" (6) experimental use exception had survived its previous decisions in Roche Products, Inc. v. Bolar Pharmaceutical Co. (7) and Embrex, Inc. v. Service Engineering Corp. (8) It characterized the defense as "limited to actions performed 'for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry.'"9 Although the Madey court did not provide any examples of the types of uses that would qualify for the experimental use defense, it delineated the boundaries of the defense by examining what uses would not qualify.

First, the Madey court stated that the experimental use exception should not insulate commercial research from claims of patent infringement. (10) The court worried that Duke might be using the free electron laser for direct commercial gain by conducting research that might lead to patentable discoveries. As Judge Gajarsa noted, "Duke, ... like other major research institutions of higher learning, is not shy in pursuing an aggressive patent licensing program from which it derives a not insubstantial revenue stream." (11)

Second, the court expressed concern that use of the laser might unfairly advance Duke's business interests regardless of any resulting commercial applications. Its formulation of what constituted a business interest, however, proved exceedingly broad. The court stated:

[M]ajor research universities, such as Duke, often sanction and fund research projects with arguably no commercial application whatsoever. However, these projects unmistakably further the institution's legitimate business objectives, including educating and enlightening students and faculty participating in these projects. These projects also serve, for example, to increase the status of the institution and lure lucrative research grants, students and faculty. (12) Under such a broad definition of business interest, it is difficult to conceive of any activity conducted by a university that would count as a "strictly philosophical inquiry" and qualify for the experimental use exception. It is not surprising, then, that press reports about the Madey decision portrayed the case as effectively overturning the experimental use exception, (13) despite the court's protests to the contrary. (14)

II

The notion that use of a patent with commercial intent should not be protected by the experimental use doctrine is longstanding. In the same year that Justice Story created the experimental use exception, he held that users with "intent to use for profit" could not avail themselves of the defense. (15) The Federal Circuit declared more recently in Roche Products that activities conducted under the "guise of scientific...