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UF’s sovereign immunity patent case bodes well for state schools


By Jesse Schwartz
Published: March 22nd, 2017

The University of Florida’s reliance on sovereign immunity to prevail in a patent challenge could represent a new defense for state schools, but the ruling isn’t a get-out-of-jail-free card. There are limitations to its usefulness, and in some cases a university might have already forfeited its immunity.

In the recently decided case (Covidien LP v. University of Florida Res. Found. Inc., IPR2016-01274, -01275, -01276), the Patent Trial and Appeal Board (PTAB) found the sovereign immunity defense valid, dismissing three petitions challenging the claims of a patent owned by the University of Florida Research Foundation (UFRF). The PTAB ruled that because UFRF is an arm of the State of Florida by way of the University of Florida, the foundation is entitled to a sovereign immunity defense for an inter partes review of the challenged patent. The decision could significantly hamper private party challenges to the validity of patents owned by public universities, university foundations, or any other state entity.

Trouble began when UFRF requested an audit of royalties under its patent license agreement with Covidien and the company refused. UFRF sued for breach of contract and Covidien counterclaimed by seeking a declaratory judgment on the basis that it did not infringe the patent, while also filing three IPR petitions challenging the patent’s validity.

When Covidien refused UFRF’s audit request for an accounting of royalties due under its license, UFRF filed the original breach of contract suit in Florida state court. UFRF asked the U.S. District Court for the Northern District of Florida to transfer the case back to state court, and the court agreed. The court’s decision to send the case back hinged on its assessment that UFRF was an arm of the State of Florida and thus entitled to sovereign immunity, the protection provided to government bodies under the Eleventh Amendment of the U.S. Constitution. Covidien argued that a sovereign immunity finding would protect invalid patents just because they were held by a state entity and that patents would be insulated from inter partes review. The PTAB disagreed and dismissed Covidien’s IPR challenges.

The University of Florida declined to comment on the case, but the PTAB ruling immediately gained notice throughout the tech transfer community. On the surface, it seemed to offer an ironclad defense to IPR challenges for state universities. Not quite, legal experts say, but the ruling is still good news for many TTOs.

TTOs at state universities now have the opportunity to block some patent challenges right away, says Christopher M. Humphrey, JD, a patent attorney with the Womble Carlyle law firm in Raleigh, NC.

“This is definitely a win for state universities in terms of strengthening their patent portfolio and making it more attractive for licensing overall. For state entities this is a good thing, for sure, and it’s nice to have it in black and white in a case holding,” Humphrey says. “It’s also generally speaking a net positive for potential licensees, unless you happen to be Covidien or another unhappy licensee. For other licensees, this can remove some worry that the patent you licensed could be invalidated.” A detailed article on the sovereign immunity case and its implications appears in the March issue of Technology Transfer Tactics. To subscribe and get the full article, along with the publication’s 10-year archive of best practices and success strategies for TTOs, CLICK HERE.

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Five Chicago-area colleges launch H1-B effort to keep entrepreneurs from leaving town


By Jesse Schwartz
Published: March 22nd, 2017

The furor over immigration law amidst a variety of Trump Administration actions and executive orders seems to beg the question: What will happen to the many highly skilled foreign workers and start-up creators who contribute mightily to the U.S. economy? Five Chicago colleges are trying to ensure their city doesn’t lose its best and brightest immigrant entrepreneurs – they’re banding together in a program aimed at securing H-1B visas and stave off an exodus of talent and start-ups from the region. continue reading »

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Avoiding Legal Issues that Can Derail University Start-Ups


By Jesse Schwartz
Published: March 22nd, 2017

Launching university start-ups may seem like second nature to many tech transfer professionals, but keeping them protected from legal challenges is anything but simple. Each start-up has its own unique structure when it comes to IP protection, licensing agreements, partnerships and more, so a cookie-cutter approach won’t work.

That’s why Technology Transfer Tactics’ Distance Learning Division has secured Joe Runge, a highly respected attorney who also handles the day-to-day business development management for UNeMed, to lead this important webinar: Avoiding Legal Issues that Can Derail University Start-Ups, scheduled for March 28. This thought-provoking program will teach you how to prepare for — and avoid — some of the toughest legal issues that face university start-ups today.

For complete details and to register, CLICK HERE.

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U of Maryland system launches $25M fund for its early-stage start-ups


By Jesse Schwartz
Published: March 22nd, 2017

The University System of Maryland (USM) is launching a $25 million early-stage investment fund – called the Maryland Momentum Fund – that will bring much needed early money into start-ups based on campus discoveries. continue reading »

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U of British Columbia professor launches start-up around painless, fear-free injection needles


By Jesse Schwartz
Published: March 22nd, 2017

A professor at the University of British Columbia (UBC) is working to commercialize a nearly invisible injection needle that is both more effective and less fear-inducing than traditional hypodermics. continue reading »

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U of Michigan start-up closes $8.3M funding round for cancer-destroying ultrasound technology


By Jesse Schwartz
Published: March 22nd, 2017

A start-up from the University of Michigan (U-M) is developing a non-invasive method to rid cancer patients of diseased tissue using high-intensity ultrasound. continue reading »

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8th edition of Drafting Patent License Agreements now available


By Jesse Schwartz
Published: March 22nd, 2017

The 8th edition of Drafting Patent License Agreements has been completely revised and expanded. It presents a current overview of all legal issues surrounding licensing, including patent exhaustion, antitrust, bankruptcy, Bayh-Dole, and export control. Also included are new chapters on the UCC and RAND licensing.

In concise chapters, Drafting Patent License Agreements, 8th Edition tracks and discusses — clause by clause — all the critical components of a license agreement. This updated reference provides you with a current overview of all legal issues surrounding licensing, addressing every typical provision used in patent and know-how licenses. Sample provisions are provided in the 675-page guidebook with references to applicable legal and practical consequences.

Also new to this edition is a link that provides access to a set of form paragraphs and clauses you can incorporate into your license agreements. Form paragraphs are indexed to the text, and each one includes the rationale and legal support so you can determine whether or not a particular form paragraph is appropriate for accomplishing your specific goals. This valuable online access also includes the form agreements contained in the appendices. For complete details and to order, CLICK HERE >>

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U of Florida licenses novel bone replacement technology


By Jesse Schwartz
Published: March 22nd, 2017

The University of Florida Research Foundation (UFRF) has licensed an artificial bone technology to medical device company Amend Surgicale, Inc. continue reading »

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Hebrew U autonomous vehicle start-up acquired by Intel for 15.3 billion


By Jesse Schwartz
Published: March 22nd, 2017

A driver-assistance technology licensed from Yissum, the tech transfer company of Hebrew University of Jerusalem, has been acquired in a $15.3 billion deal with tech giant Intel. continue reading »

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U of Winnipeg turns industry heads with its anti-microbial coating technology


By Jesse Schwartz
Published: March 22nd, 2017

A start-up from the University of Winnipeg is attracting big industry players for its anti-microbial surface coating. continue reading »

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Toulouse Tech Transfer licenses AI technology to BrainChip


By Jesse Schwartz
Published: March 22nd, 2017

France’s Toulouse Tech Transfer and BrainChip Holdings Ltd., a developer of software and hardware for artificial intelligence and machine learning applications, have signed a license agreement granting BrainChip exclusive rights to learning rules and algorithms for use in its existing technology platform.    The company has developed a Spiking Neuron Adaptive Processor (SNAP) technology that can learn autonomously, evolve and associate information just like the human brain. Target markets include civil and commercial surveillance as well as machine learning. continue reading »

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Comings and goings


By Jesse Schwartz
Published: March 22nd, 2017

• Oxford University Innovation (OUI), the research commercialization company of Oxford University, has named Dr. Adam Stoten its new Chief Operating Officer. Stoten currently heads OUI’s life sciences division, and he’ll assume the newly created position on April 1.

Stoten will be taking over from Linda Naylor, who is retiring at the end of April. Naylor has been with OUI since 2002, and the COO position will be replacing her current title of Managing Director. In her 15-year tenure with OUI, Naylor is credited with overseeing the launch of over 100 spinout companies and more than 1,000 licensing deals. She also helped build the company’s consulting services, which grew from about 40 engagements annually to more than 450 in 2015.

Stoten has been with OUI in a variety of roles starting in 2005, including a leadership position with Emergent BioSolutions, which conducted the first ever efficacy study of a new tuberculosis vaccine in infants. His achievements in the Life Sciences Licensing & Ventures Group include the $14.55M purchase of non-invasive prenatal testing IP by US-based biotech firm Sequenom and the recent launch of LAB282, a £13M drug discovery partnership between Evotec AG and Oxford Sciences Innovation, an investment arm of Oxford University.

Commenting on Naylor’s impact over the years, OUI’s Chief Executive Officer Matt Perkins said Naylor  “transformed OUI into one of the world’s leading research commercialization offices. This changing of the guard comes with the company in its strongest position yet, and I look forward to working closely with Adam to build on Linda’s contribution.”

Source: Oxford University Innovation

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• Bruce Gjovig, longtime leader of the University of North Dakota’s Center for Innovation, is retiring on April 30. Gjovig served as CEO and entrepreneur coach at the center, which helps UND students launch start-ups based on their own research and innovations. Gjovig says the success of the facility came largely from the “raw talent” of the students who have come through it.

“I gave them an opportunity and they capitalized on it,” he comments. “Putting young people first and foremost has really been one of the secrets to my success–they nailed it. It was terrific.”

UND provost Tom DiLorenzo has yet to choose the next director of the center.

Source: Grand Forks Herald

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• The Association of University Research Parks (AURP) has chosen Carol Stewart, a veteran research park leader and AURP co-founder, to serve as its CEO. Stewart has more than 25 years experience in the academic and nonprofit sectors, as well as within the high-tech industry.

She currently manages the University of Waterloo’s David Johnston Research + Technology Park, where she leads planning and development, among other responsibilities.

“Throughout Carol’s career and during her time with AURP Canada, she has demonstrated her ability to foster collaboration and cultivate innovation amongst every level and type of partner and affiliate,” comments AURP president Mason Ailstock. “She empowers those around her and encourages a drive that is infectious. We are excited about our selection of Ms. Stewart as the next AURP leader to continue to move forward both the Association and research parks.”

Source:  Association of University Research Parks

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