Thank you for sharing!

Your article was successfully shared with the contacts you provided.
Before LINN, PROST, and MOORE, Circuit Judges.

The Board of Trustees of the Leland Stanford Junior University (“Stanford”) appeals a final judgment that the asserted claims of U.S. Patents No. 5,968,730 (“’730 patent”), No. 6,503,705 (“’705 patent”), and No. 7,129,041 (“’041 patent”) are invalid for obviousness. Bd. of Trs. v. Roche Molecular Sys., Inc., 563 F. Supp. 2d 1016 (N.D. Cal. 2008) (“Invalidity Opinion”). Roche Molecular Systems, Inc., Roche Diagnostics Corporation, and Roche Diagnostics Operations, Inc. (collectively, “Roche”) cross-appeal that part of the district court’s judgment relating to Roche’s ownership, license, and shop rights to the patents-in-suit. Bd. of Trs. v. Roche Molecular Sys., Inc., 487 F. Supp. 2d 1099 (N.D. Cal. 2007) (“Contract Opinion”).

Because the district court correctly found that Roche’s counterclaim for a judgment on its ownership claim was subject to California statutes of limitation, we affirm that part of the district court’s ruling. However, because the district court incorrectly declined to consider Roche’s affirmative defense based on ownership, and because we conclude as a matter of law that Roche possesses an ownership interest in the patents-in-suit that deprives Stanford of standing, we vacate the district court’s judgment of invalidity and remand with instructions to dismiss Stanford’s action.

Reprints & Licensing
Mentioned in a Law.com story?

License our industry-leading legal content to extend your thought leadership and build your brand.

More From ALM

Premium Subscription

With this subscription you will receive unlimited access to high quality, online, on-demand premium content from well-respected faculty in the legal industry. This is perfect for attorneys licensed in multiple jurisdictions or for attorneys that have fulfilled their CLE requirement but need to access resourceful information for their practice areas.
View Now

Team Accounts

Our Team Account subscription service is for legal teams of four or more attorneys. Each attorney is granted unlimited access to high quality, on-demand premium content from well-respected faculty in the legal industry along with administrative access to easily manage CLE for the entire team.
View Now

Bundle Subscriptions

Gain access to some of the most knowledgeable and experienced attorneys with our 2 bundle options! Our Compliance bundles are curated by CLE Counselors and include current legal topics and challenges within the industry. Our second option allows you to build your bundle and strategically select the content that pertains to your needs. Both options are priced the same.
View Now

Elite Trial Lawyers 2022 (ETL)

July 14, 2022
New York, NY

The National Law Journal Elite Trial Lawyers recognizes U.S.-based law firms performing exemplary work on behalf of plaintiffs.

Learn More

GlobeSt. ELITE Women of Influence 2022 (WOI)

July 25, 2022 - July 27, 2022
Park City, UT

GlobeSt. Women of Influence Conference celebrates the women who drive the commercial real estate industry forward.

Learn More

African Legal Awards (AFLA) 2022

September 02, 2022

The African Legal Awards recognise exceptional achievement within Africa s legal community during a period of rapid change.

Learn More

Litigation Associate

A highly regarded Orlando litigation boutique is seeking a business litigation associate with a minimum of two years of experience. The cand...

Apply Now ›

Associate Attorney- Connecticut

Busy personal injury law firm representing plaintiffs seeks associate with 1 to 6 years experience. After appropriate training, the candidat...

Apply Now ›


Miami Law Firm seeks Legal Secretary with experience in Plaintiff s Personal Injury. Bilingual. 10800 Biscayne Blvd. Please call: 561-866-8...

Apply Now ›



MAGGIANO, DIGIROLAMO & LIZZI, P.C., wiith a heavy heart, acknowledge the passing of Anthony J. Sciuto, JSC (Retired), and of counsel to the law firm.

View Announcement ›



Raynes & Lawn is proud to congratulate Harold I. Goodman on the prestigious honor of Lifetime

View Announcement ›



IN MEMORIUM: With a profound sense of sadness, McCormick & Priore announces that Harry A Short, Jr., a preeminent products liability defense lawyer in Philadelphia with a career that spanned over sixty-five (65) years, passed away on June 14, 2022.

View Announcement ›