Tech Transfer eNews Blog

Court ruling undermines sovereign immunity, puts university patents at risk


By Jesse Schwartz
Published: August 21st, 2019

State universities are now in a weaker position when protecting patents from inter partes review (IPR) petitions, after the Federal Circuit court ruled that sovereign immunity does not apply in patent challenges. The ruling could require some universities to reassess their patent enforcement strategies and brace for significantly higher costs from increased IPRs.

The case in question involves the University of Minnesota (UMN), which has argued that its patents could not be subject to IPR proceedings because, as an arm of the state, its patents were protected by sovereign immunity. The court said no in a rather forceful way, ripping this defense strategy from state universities across the country.

Some observers say this decision is another step in the road toward an anti-patent bias in the U.S. courts, but the legitimacy of that criticism depends on your perspective, says Edward H. Rice, JD, principal with the Miller Canfield law firm in Chicago.

“I can understand where patent owners are feeling under increasing pressure because of the IPR and other patent office procedures but also Supreme Court and district court rulings that, for instance, make it easier to collect attorney fees in unsuccessful cases,” Rice says. “That provides some disincentive and makes you think twice about bringing a case if you might have to pay the other side’s fees.”

The courts have been responding to legitimate concerns about patent trolls and frivolous patent infringement lawsuits, Rice says, but the UMN case and other recent rulings may signal that they have gone too far and are undermining the value of patents. “I think there may be some overreaction, with anti-patent sentiment swinging the pendulum too far against the patent owner,” Rice says. “It may swing back in the other direction some day, but I think there is some validity to the notion that rulings and laws in the past five to 10 years have swung more often than not against the patent owner.”

In the closely watched case, the Federal Circuit ruled that sovereign immunity does not apply to several IPR petitions filed against UMN-owned patents. (The ruling is available online here.) The court’s reasoning was based in part on a 2018 decision in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc., which addressed whether tribal sovereign immunity would shield tribe-owned patents from IPR proceedings.

The court in that case determined that “tribal sovereign immunity cannot be asserted in IPRs.” The Saint Regis tribe petitioned the U.S. Supreme Court for review, but the court denied the petition for certiorari in April 2019.

The challenge was clouded somewhat by the fact that drug company Allergan, in an attempt to shield its patents from IPR, had paid a fee to the tribe and transferred title to its patents, essentially using sovereign immunity as a patent protection tool for a for-profit company. However, the Federal Circuit court in the UMN case determined that “the differences between tribal and state sovereign immunity do not warrant a departure from the reasoning in Saint Regis.” The court went on to say that with regard to the Saint Regis decision, “this reasoning applies equally to states as it does to tribes…. As we held in Saint Regis, IPR is properly viewed as an agency’s reconsideration of a previous patent grant that is aided by information supplied by a third party, and state sovereign immunity does not bar these proceedings.”

A detailed article analyzing the impact of the Federal Circuit ruling on patent protection and licensing appears in the August issue of Technology Transfer Tactics. For subscription information, CLICK HERE.

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Michigan State asks judge to dismiss licensee lawsuit alleging fraud, breach of contract


By Jesse Schwartz
Published: August 21st, 2019

Michigan State University (MSU) is asking a judge to dismiss a lawsuit alleging the university committed fraud and breach of contract concerning a technology designed to protect soldiers and athletes. continue reading »

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Taking Legal Action Against Your Licensee: What TTOs Need to Know


By Jesse Schwartz
Published: August 21st, 2019

Every so often, there comes a time when tensions arise between a university TTO and its licensee. Whether it’s due to a communication snafu, license compliance, payment issues, or performance problems, most of the time these disputes can be resolved quickly with little impact to the relationship — particularly for TTOs with an effective enforcement plan in place. However, when discussions fail to bear fruit, there are times when the university’s investment, reputation and the future of the technology demands that a dispute escalate to the point of litigation. Will you be prepared?   

Taking Legal Action Against Your Licensee: What TTOs Need to Know, scheduled for August 27th, will explore real-world strategies for addressing disputes with licensees and infringers alike. Proven best practices for navigating the complexities of enforcement — from identifying problems to negotiating solutions to full-blown litigation — will be discussed. Please join Technology Transfer Central’s Distance Learning Division and its team of expert attorneys from Fish and Richardson for this important webinar. For complete program details and to register, CLICK HERE.

Also Coming Soon:

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U of Iowa considers licensing works of art from its collection


By Jesse Schwartz
Published: August 21st, 2019

The University of Iowa (UI) is calling on potential partners to help monetize its innovations — not just in science and technology, but in art, too.

In light of tight budgets and staffing, UI is looking for outside help to evaluate university technologies for commercial potential, market those technologies by reaching out to companies and potential customers, and help close new deals. In addition, UI wants help licensing its precious works and art collections for the very first time.

“A lot of the departments and schools around the university that have not traditionally been involved in commercialization are certainly looking for ways in which to find supplemental funding to support their programs,” says Marie Kerbeshian, executive director of the nonprofit UI Research Foundation. “And artwork is one.”

There are 15,000 pieces at the UI Stanley Museum of Art. Rather than sell them, the university –through the Research Foundation — aims to license out images of artworks for use on greeting cards, calendars, clothing and other products in areas outside of UI’s expertise. A commercial partner could help catalog its potentially licensable works, digitally render the images, and then market them to retailers.

Revenues earned through licensing would then go back into the museum, which is currently raising $25 million to rebuild after a 2008 flood.

“It would be helpful for [the museum] to be able to go through their portfolio to see — is there any potential there? And really supplement them as they’re working on fundraising for their new building,” says Kerbeshian.

The move to commercialize UI art and bring in marketing help is part of an effort to address the university’s diminishing returns from technology licenses. Most notably, UI stopped receiving income from its groundbreaking “CMV promoter” biotechnology, which over its patent life generated $170 million for the university and its inventors.

In just the last year the Research Foundation cut a third of its workforce through furloughs and attrition, bringing its staff total to nine. “We still want to give faculty the service they deserve and expect,” she said. “And we want to be good partners for companies that work with us. We don’t want to be the bottleneck.”

To supplement the work of its licensing associates, “we are looking for support in the middle,” Kerbashian adds. “We are [seeking] to identify a partner who can supplement what our licensing staff does.”

Source: The Gazette

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Yissum inks licensing deal with Nanosys for portfolio of 60 quantum dot patents


By Jesse Schwartz
Published: August 21st, 2019

Yissum, the tech transfer company of The Hebrew University of Jerusalem, has executed a licensing deal with California-based Nanosys covering more than 60 patents and pending patents for quantum dot technologies. Under the terms of the agreement, Yissum will grant Nanosys an exclusive, worldwide, sublicensable, royalty-bearing license to its patented quantum dot technology in display, lighting and healthcare applications. continue reading »

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Purdue researchers develop novel lens that could pave the way for next-generation electronics


By Jesse Schwartz
Published: August 21st, 2019

Researchers at Purdue University have developed a new type of lens that generates intense beams of ions that can be used to create a range of technologies like energy storage devices or optical coatings. continue reading »

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Inexpensive software for in-house IP valuations


By Jesse Schwartz
Published: August 21st, 2019

Most IP valuation methods that have been developed are either inexpensive but yield very coarse results, or so costly they are out of reach for most TTOs and many other IP professionals. The Competitive Advantage Valuation (CAV) system is a software program designed to close that gap, offering both affordability and precision. The CAV method was developed over many years to value IP assets and formulate technology commercialization strategies on behalf of corporate, university and federal laboratory clients of the Technology Commercialization Research Center at Syracuse University. CAV is the only software-based valuation method that:

  • Considers all of the variables that determine IP value;
  • Calculates discrete dollar and percentage amounts for IP value variables;
  • Calculates IP competitive advantage relative to competing IP;
  • Quantifies technical, market and intellectual property risk associated with IP;
  • Equalizes return on investment in IP for parties engaged in an IP exchange.

The CAV software yields clear and logical valuation results at an extremely low price when compared with other products or typical consulting fees. The pricing is designed to make valuation expertise more widely available and allow any organization, regardless of budget, to conduct valuation analyses in-house. Under a special agreement with 2Market Information, the CAV system is available for only $350. For complete details and an online demo, CLICK HERE.

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Oxford start-up secures €7 million to develop discovery platform for sustainable herbicides


By Jesse Schwartz
Published: August 21st, 2019

An Oxford University start-up has secured €7 million (over $7.77M US) to advance a discovery platform for the development of safe, sustainable herbicides. continue reading »

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Oak Ridge National Lab spinout develops system to convert food waste into biofuel


By Jesse Schwartz
Published: August 21st, 2019

A spinout from the Department of Energy’s Oak Ridge National Laboratory (ORNL) aims to commercialize a technology that converts organic waste into renewable biofuel. continue reading »

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Comings and goings


By Jesse Schwartz
Published: August 21st, 2019

Princeton University has chosen professor of chemical and biological engineering Rodney Priestley to serve in the newly created position of Vice Dean for Innovation.

Priestley will work closely with the Princeton Office of Corporate Engagement and Foundation Relations to continue to build ties with industry, entrepreneurs, venture capitalists, alumni and other potential innovation partners. He will also work with the Office of Technology Licensing to help researchers turn their discoveries into products and companies, and will foster a culture of innovation and entrepreneurship through workshops, training, networking opportunities and other crucial resources.

In addition to his experience in academia, Priestley has co-invented four patent-pending technologies and co-founded start-ups based on his research at Princeton.

“His wide-ranging experiences and successes as a scholar, entrepreneur, and partner with industry are exactly what this leadership role needs,” says Emily Carter, dean of the School of Engineering and Applied Science at Princeton.

Priestly comments, “I am extremely honored to have the opportunity to work with colleagues across campus and to help define and implement the next phase in Princeton’s emergence as a leader in innovation and entrepreneurship.”

Source: The Daily Princetonian.

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Jenna Dix has become Technology Transfer Director for the Naval Surface Warfare Center, Crane Division (NSWC Crane) in the center’s new Office of Research and Technology Applications (ORTA). Dix previously served as NSWC Crane’s tech transfer agreements administrator.

In her new role Dix will conduct strategic management of the lab’s intellectual capital and help to connect academia, industry and start-ups to resources available at NSWC Crane. She’ll be working to support and expand efforts to commercialize Crane-developed technologies, while at the same time helping to spur non-military economic activity in the form of small businesses and start-ups.  Dix will also focus on strategic partnerships, enabling the NSWC Crane lab’s scientists and engineers to work collaboratively with their peers in industry and academia to develop technical solutions for the warfighter.  

“I am honored at the opportunity to serve NSWC Crane as the T2 Director,” says Dix. “I look forward to the continuing to serve the Navy and the warfighter by ensuring the T2 program is strategically situated to help meet their needs.” 

Source: Naval Sea Systems Command

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Inside the culture of patient-centric innovation at Mount Sinai Innovation Partners


By Jesse Schwartz
Published: August 13th, 2019

With 40 full-time employees, Mount Sinai Innovation Partners (MSIP) at the Mount Sinai Health System is one of the larger commercialization offices. Last year, the office engaged with 717 inventors and handled 128 disclosures and 209 patent filings. Behind those numbers are a bevy of programs and strategies that make MSIP an organization to watch and model.

“We have a very healthy and productive culture that is focused on what we think of as commercially relevant translational research that ultimately may be able to benefit patients within the institution,” says Erik Lium, PhD, executive vice president of MSIP. “Even if you’re pursuing very early-stage, pure discovery based-research, there’s a culture that says, ‘let’s still think about how this might benefit a patient someday.’”

Here’s a brief look at what MSIP sees as the key programs and strategies behind its success:

• Concerted effort to engage with outside expertise. “There needs to be an ongoing dialogue between individuals that understand market dynamics and what’s out there in a competitive landscape. So, we spend a fair amount of time thinking about and communicating about when [an inventor has] a technology that’s been disclosed, what would a potential licensee or investor want to see in order to evaluate that technology from the perspective of moving forward with some type of a transaction.”

• Strong internship and externship programs. MSIP has an internship program that is focused on commercialization, and also offers a legal externship program in partnership with local law schools. Cynthia Cleto, associate director of marketing and outreach, notes that MSIP also encourages the participation of externs from other institutions. “We actually expect folks from across the New York State life science ecosystem,” she says. Most institution are focused only on “developing the folks within the institution, but we’re thinking bigger,” she adds.

• Aggressive use of master collaboration agreements. MSIP has many partnerships with external entities, and its aggressive use of master agreements has been a critical factor in building those partnerships.

• A strong accelerator. Mount Sinai launched an accelerator in April 2018 called the i3 Accelerator with an initial investment of $10.5M over four years. “The accelerator [includes] a fund specifically dedicated to advancing early stage technologies to later stages through milestones-based project development plans,” said Lium. “Advisors from the commercial world help us make decisions on which assets to fund and then what the next steps should be to advance those assets.”

• Staffing, structure, and goal-setting. The MSIP team is broken into sub-teams for business development, alliance management, new ventures, contracts and licensing, intellectual property, finance and operations, marketing and outreach, and administration. Each of the sub-teams develops goals that directly support MSIP’s key strategies. “We hold group meetings to go through a process every year where we develop our goals for all of MSIP, as well as for the teams,” says Lium.

• Robust IP management system. A customized IP management system enables the MSIP staff to manage technologies and the further development of those technologies, as well as track key metrics. “A lot of technologies require additional work to advance to a point where you have the type of data that would be necessary to support a potential license, to make a decision on partnering with an institution in licensing for launching a new company, or a licensing transaction to an existing company. We’ve built a system for specifically managing all intellectual property and tracking the advancement of that intellectual property.”

MSIP’s system also incorporates tracking that internally reports metrics of office activities every week. “The metrics go out to the entire team and the metrics are used to be informative to the team – are things working the way we think they should be working, is there something that we need to keep our eyes on,” says Lium. For example, he illustrates, “are the number of agreements increasing rapidly so that we need more resources to ensure that we can support the institution?

• Transparency with researchers. MSIP is very transparent about its decisions, providing feedback and data to inventors on how they come to their conclusions about which assets to back. They provide a decision support document that goes through major topics related to the decision, such as competition and other market factors. The office also holds weekly decision meetings, to which they invite entrepreneurs, advisors, and faculty.

An article detailing Mount Sinai’s best practices and strategies appears in the July issue of Technology Transfer Tactics. For subscription information, CLICK HERE

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Just published: The Technology Transfer Book of Best Practices


By Jesse Schwartz
Published: August 13th, 2019

The all-new Tech Transfer Book of Best Practices has just been released. This must-have 729-page resource is chock-full of how-to strategies and case studies covering the most critical challenges facing tech transfer professionals. This all-new book of best practices is compiled from our world-leading newsletters offers the most cost-effective way to zero in on proven best practices in every key area impacting your TTO. With this comprehensive report you’ll boost your program’s results with critical success strategies implemented by the world’s top TTOs. 

Available in both print and electronic download, The Tech Transfer Book of Best Practices is packed with over 190 detailed articles filled with tips, tactics, ideas, expert guidance, and nuts-and-bolts solutions for TTOs. For complete details including a complete table of contents or to order, CLICK HERE.

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