University Patent Enforcement

AuthorElizabeth Rodriguez - Sean Solberg
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.
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.
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,, 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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