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A trade secret lawsuit between the world-renowned Mayo Clinic and one of its former doctors is heading to trial after a federal judge in Minnesota denied summary judgment to both parties last week. At issue is who owns the rights to a software program that can do everything from manage insurance billing codes to track the spread of disease caused by terrorist attacks. The Mayo Clinic contends that it owns the software and that the man who helped invent it — Dr. Peter Elkin — stole the program’s core code from Mayo; gave public speeches about it, thereby revealing trade secrets; and “had made plans with several major companies to commercialize” the software behind Mayo’s back. Not quite, argues Elkin, who in a countersuit alleges that he owns exclusive rights to the software because he developed the technology before joining Mayo in 1996 and that Mayo has reaped millions off his technology without paying him a cent in royalties. In his March 4 ruling, U.S. District Judge David Poty held that “disputed, genuine issues of material fact exist as to who owns” the software and its core code. That question, he held, is best left up to a jury, along with several others, such as “whether Mayo took reasonable steps to ensure the secrecy” of the code and whether Elkins breached his employment contract with Mayo and violated its intellectual property policy, as the company alleges. Jonathan Singer of the Minneapolis office of Fish & Richardson, the lead attorney representing the Mayo Foundation for Medical Research and Education, was not available for comment. Elkin, who is representing himself and currently works for Mount Sinai Medical Center in New York, was also unavailable for comment. According to court documents, Elkin was hired by the Mayo Clinic in 1996 as a clinician and researcher. During his 12-year stint there, he helped attract more than $7 million in grants to develop software to manage billing codes and to track disease outbreaks. He had started developing the core elements of this software earlier when he was a research fellow at Harvard Medical School and School of Public Health. A few years after hiring Elkin, according to court documents, Mayo became interested in commercializing Elkin’s software and later formed a business to do so in conjunction with other entities and private individuals. It was called Conceptual Health Solutions. Under an agreement, Elkin alleges, he was to receive 40 percent in royalties but got nothing. Over the years, the relationship between Elkin and Mayo soured. In the suit, Mayo alleges that Elkin worked to undermine the commercialization of the software. He allegedly attempted to secretly sell a different version of the software to pharmaceutical giant Merck & Co. in 2008. Mayo also alleges that Elkin revealed confidential information about the software at an American Medical Informatics Association meeting in Washington in November, during which he allegedly tried to sell the software to audience members. Mayo contends that under its IP policy and Elkin’s employment contract, the company owns the rights to the software. Elkins denies ever publicly commenting on the software or divulging the core code. Moreover, he alleges in court documents, Mayo’s IP policy gave him exclusive rights to the software “because he developed the technology prior to his employment at Mayo, and disclosed his ownership to Mayo before joining its staff.”

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