University Patent Enforcement

• Author: Elizabeth Rodriguez - Sean Solberg
• Pages: 157-173

Jacob H. Rooksby1

Patent litigation increasingly is a booming industry in the United States. For universities

engaged in technology transfer, the stakes often are high. What should the institution do

if a company that practices technology covered by a university-owned patent refuses to

take a license to the patent? What if a licensee to a university-owned patent identies an

infringer and decides it wants to bring a lawsuit? Must the university participate in the

litigation? What if the licensee sues the alleged infringer without notifying the university?

These are just some of the tricky questions that can confront managers of university

technologies and their counsel. This chapter provides general background on patent

infringement litigation, discusses common issues for universities involved in infringement

disputes, and offers guidance as to what university technology managers and their counsel

can do to help plan for a future that may include litigation.

I. Background on Patent Litigation

The phrase “patent litigation” is a term of art that means different things to different people.

Any manner of dispute can give rise to litigation that one might deem “patent litigation”

in the sense that it pertains to a patent. For example, disputes over legal terms in patent

licenses, inventorship, and decisions by the U.S. Patent and Trademark Ofce (USPTO)

to deny an applicant a patent might all be called “patent litigation” by those involved.

1. Jacob H. Rooksby is Assistant Professor of Law at Duquesne University School of Law in Pittsburgh, Penn-

sylvania. This chapter reects the personal views and thoughts of Professor Rooksby and is not to be construed

as representing in any way the views, opinions, or practices of Duquesne University. The content is solely for

purposes of discussion and illustration, and should not be considered legal advice.

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Chapter 8

University Patent Enforcement

Challenges and Opportunities

Reexamination proceedings and post-grant reviews—both of which are adversarial—may

also t this rubric. But the focus of this chapter is on the avor of patent litigation most

accurately described as patent infringement litigation. Allegations of patent infringe-

ment can arise in both offensive postures and defensive postures.

2

The former come in

the form of a complaint led in federal court, while the latter arise as a counterclaim by

a defendant to a lawsuit already initiated. Allegations of patent infringement are closely

related to allegations of patent invalidity, as no party can be found to infringe a patent

that is invalid. Accordingly, parties accused of patent infringement nearly always allege

as a defense that some or all claims in the patent in suit are invalid and ask the court to

declare as much as a matter of law. Thus, any patent-owning entity considering ling an

infringement lawsuit must be prepared to substantiate the validity of the asserted claims,

often to a higher degree than was required to obtain the patent in the rst place.

Universities have not been immune to the notable uptick in patent infringement lawsuits

led in recent years. In 2012, 22 different American universities led 43 patent infringe-

ment lawsuits—to date, the most ever.3 The number of such lawsuits increased in 2013,

with one university ling over 30 separate actions.4 Although data from earlier years is

spotty, over 70 American universities have led over 350 patent infringement lawsuits—

alone and in conjunction with licensees—since the early 1970s.5 While universities with

rich histories in technology transfer unsurprisingly top the list of most frequent litigants

(e.g., University of Wisconsin-Madison, MIT, University of California, University of Texas),

every year, new universities are trying their hand at patent enforcement.

Recent headlines provide no indication of these trends abating. For example, in August of

2013, Boston University (BU) attracted attention when it led over 30 separate infringement

lawsuits against electronics companies it said had infringed a university-owned patent

directed toward a technology involving blue LEDs, which are commonly incorporated

in handheld phones and tablet devices.6 The list of notable defendants included Black-

Berry, Canon, Dell, Eastman Kodak, Fujilm, Microsoft, Motorola, NEC, Nikon, Nokia,

Olympus, Panasonic, Sharp, Sony, Toshiba, and Vizio. This widely publicized enforcement

action came on the heels of earlier lawsuits led by BU against Apple, Amazon.com, LG,

and Samsung, alleging infringement of the same patent.7

2. Universities occasionally are accused of infringing patents and must defend patent infringement lawsuits.

This chapter does not address such lawsuits.

3. Jacob H. Rooksby, Innovation and Litigation: Tensions Between Universities and Patents and How to Fix

Them, 15 Y J.L.  T. 312, 339 (2013).

4. See Rich Barlow, BU Sues Leading Tech Firms for Patent Infringement, BU T (Sept. 24, 2013), http:// www

.bu .edu /today /2013 /bu-sues-leading-tech-firms-for-patent-infringement /.

5. See Rooksby, supra note 3, at 339 (reporting 327 patent infringement lawsuits involving universities through

2012; including collected but as yet unpublished lawsuit data from 2013 brings the total number to over 350).

6. See Barlow, supra note 4.

7. Id.

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