Board of Trustees of Leland Stanford Junior Univ. v. Roche Molecular Systems, Inc. (09-1159)

argument 09-1159

Board of Trustees of Leland Stanford Junior Univ. v. Roche Molecular Systems, Inc.

Supreme Court of the United States 1h 1m 6 speakers 8 chapters transcribed 7 days ago official recording ↗

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What is the Vidal Act and how does it allocate invention rights in federally funded projects?

John G. Roberts 0:03

We'll hear argument next this morning in case 09-1159, the Board of Trustees of Stanford v. Roche Molecular Systems. Mr. Ayer.

Mark D. Eyre 0:11

Thank you, Mr. Chief Justice, and may it please the Court. The Vidal Act sets forth a comprehensive disposition of rights in inventions made by nonprofit organizations and small business organizations under federal funding agreements. That disposition specifically defines the rights of inventors, and it puts them in the third position behind inventors the contractor, the nonprofit contractor, and behind the government, and specifically says that the inventor may only receive rights, that is to say, take title, when the contractor has declined to take title or defaulted in some respect, and the government itself has likewise declined to take title. In this case, Roche's sole claim rests on an assignment from an inventor that

Mark D. Eyre 0:59

who was at that time, I think without question, a Stanford employee who was working on a project under a federal funding agreement.

Elena Kagan 1:09

If it had not been an employee, if it had been an independent contractor who was working in combination with the university, how does this automatic vesting work?

Mark D. Eyre 1:23

Well, Your Honor, the Act deals specifically with independent contractors, and the regulations at least do, and they indicate that the contractor in that instance, if in fact working on a federally funded project, would step into the shoes of the contractor. But I don't believe it would affect the outcome in terms of whether it would be a Bayh-Dole invention. The critical fact here is that the inventor was working on a project that was already funded His work at CETUS was part of that project. And then that

Unknown 1:57

result was — That seems to be a factual dispute. So maybe you can be clear on that. According to CETUS or Roche, at the time that this scientist came to CETUS to work, there was no federal funding. The federal funding for this project, the Stanford project, came about after the scientist had spent his nine months at CEDIS. That's the picture that they draw. The Federal — they got their assignment from the scientist at a time when there was no federally funded project.

Mark D. Eyre 2:40

MR. That's what they say, Your Honor, and I would submit that is plainly not correct. We deal with this at pages 21 and 22 of our yellow brief, and we specifically talk about the fact — there are several critical facts here. is that the article which was written about the work at CETUS, the JID article, at page 135 of the joint appendix, specifically has a footnote indicating that the work reported on, that is the work at CETUS on the assay, was funded by the two specific grants in issue. Dr. Merrigan, who is the head of the lab at Stanford that Dr. Holodny worked in, talks in his declaration at 98 and 99 about of the Joint Appendix specifically talks about how Dr. Holodny's work was part of the AIDS Research Center at Stanford and part of an AIDS clinical trial at Stanford, and all of that work was federally funded.

Mark D. Eyre 3:32

JUSTICE GINSBERG.

Unknown 3:33

Well, just as a hypothetical, suppose it was as Justice Ginsburg suggested, or indeed suppose this individual, even before he was employed by Stanford at all, much less employed by a Stanford project funded by the federal government, entered into this kind of an agreement with somebody that he had been working for? How would it

Mark D. Eyre 3:58

be? Well, I think you have to look very carefully at the facts, and I don't want to speak loosely and categorically about the facts, but what I will say is that in a situation where, and this is very clearly true, in a situation where prior work is done by persons who are start with a clearer set of facts, not affiliated with the university. And they, let's say, that person conceives of an invention and that later the university takes that conception of an invention and reduces it to practice. The conception by a person who is not a university employee, if there's no university person involved in the conception, then it can't be an invention of the contractor because the You can't be an inventor without being part of the conception.