Madey v. Duke University

307 F.3d 1351 (2002)

Purchase the Printed Copy at bsmsphd.com

Nature of the Case

To access this section all you need to do is click here and register.

Facts

P was a tenured research professor at Stanford University. An opportunity arose for P to consider leaving Stanford and take a tenured position at D. P left Stanford for a position in D's physics department. In 1989 P moved his free-electron laser (FEL) research lab from Stanford to D. The FEL lab contained substantial equipment, requiring D to build an addition to its physics building to house the lab. In addition, during his time at Stanford, P had obtained sole ownership of two patents practiced by some of the equipment in the FEL lab. At D, P served for almost a decade as director of the FEL lab. A dispute arose and D contends that, despite his scientific prowess, P ineffectively managed the lab. P contends that D sought to use the lab's equipment for research areas outside the allocated scope of certain government funding and that when he objected, D sought to remove him as lab director. P was removed as director and then resigned from Duke in 1998. D continued to operate some of the equipment in the lab. P sued D for patent infringement of his two patents. D moved to dismiss the infringement claims. The district court acknowledged a common law 'exception' for patent infringement liability for uses that are 'solely for research, academic or experimental purposes.' The district court recognized the debate over the scope of the experimental use defense but cited this court's opinion in Embrex to hold that the defense was viable for experimental, non-profit purposes. The court then placed the burden on P to establish actionable infringement. P had to establish that D has not used the equipment at issue 'solely for an experimental or other non-profit purpose. To prove a violation P must sufficiently establish that D's use of the patent had 'definite, cognizable, and not insubstantial commercial purposes.' P, in part, attacks the court's shifting the burden to P to allege and prove that the D's use was not experimental. P argued that D's research in its FEL lab was commercial in character and intent. The district court rejected P's argument, relying on another statement in the preamble of the P patent policy which stated that P was 'dedicated to teaching, research, and the expansion of knowledge . . . [and] does not undertake research or development work principally for the purpose of developing patents and commercial applications.' The court granted P’s motion for summary judgment. P alleges on appeal that the district court erred.