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The Supreme Court on Monday agreed to referee a high-stakes patent dispute over university ownership of inventions that may give the justices another chance to rein in the U.S. Court of Appeals for the Federal Circuit. Top research universities, joined by the Obama Justice Department, urged the Supreme Court to grant review in Stanford University v. Roche Molecular Systems, citing the billions of dollars and thousands of jobs that have been generated by university licensing of inventions that stem from federally funded research. Also on Monday, the Court agreed to hear J.D.B v. North Carolina, a case testing the Miranda rights of children who are interrogated in school settings, and Turner v. Price, which asks whether indigent defendants have a constitutional right to appointed counsel in civil contempt proceedings In the Stanford patent case, the federal circuit in September 2009 ruled against the university’s claim of rights over an invention that measures the effectiveness of HIV treatments. Even though the inventor did research under a National Institutes of Health grant to Stanford, he also was working for a company later acquired by Roche and made an agreement assigning his rights to that company. Stanford claimed title to the invention under the Bayh-Dole Act of 1980, and in 2005 sued Roche, asserting the company was infringing its patent in its marketing of HIV detection kits. The circuit ruled that Roche “possesses an ownership interest” and rejected Stanford’s claim. By siding with Roche, the Federal Circuit threatens the “success story” of university licensing “by casting in doubt the rights of universities and the federal government alike to inventions arising from hundreds of billions of dollars in research,” according to a brief filed with the high court on behalf of more than 40 universities by Douglas Hallward-Driemeier of Ropes & Gray. The brief states that between 1996 and 2007, university patent licensing has had a $457 billion impact on the U.S. economy and created 279,000 jobs. An MIT brief also urging high court review states that since 1980, the university has been issued 3,673 patents under the Bayh-Dole system, which means that “several times every day, MIT needs to know, with clarity, who owns this vast array of intellectual property flowing from federal funding.” Kelly Klaus of Munger, Tolles & Olsen in Los Angeles authored the brief. Acting Solicitor General Neal Katyal also sided with Stanford, asserting that the Federal Circuit ruling “allows the wishes of a single inventor to override the act’s allocation of rights in federally funded inventions.” The decision created “serious uncertainty” about title to patents, and threatens the ability of the government to ensure that federal funding for research “promotes the public interest,” Katyal wrote. In an unusually sharp response, lawyers for Roche told the Supreme Court that the government’s brief was “untethered to the facts” and misstated both the background of the case and the federal circuit ruling. The inventor was not trying to circumvent Stanford, Roche said, and the invention was conceived under Roche auspices. Representing Roche and urging the Court not to take the case was Adrian Pruetz of the Pruetz Law Group in El Segundo, California. The high court, which has generally been critical of Federal Circuit rulings in recent years, will hear arguments in the case early next year in time to rule by the end of the term next June.

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