Upblog, my co-blogger Blaine linked a Daily Princetonian article that reported concern over some harm to "the scholarly industry." That phrase struck me, "the scholarly industry." What does it describe and evoke in a reader's mind? Is it a phrase that resonates positively, or negatively? It probably depends on the reader. "The Scholarly Industry" does suggest a pro-intellectual-property position in that it suggests that universities should be driving commerce and also the phrase evokes the classic industrial era, which was a time of growth under an intellectual property based legal regime.

The Open Access Movement is the name given to the trend among academics to retain copyrights in their scholarly work rather than assign them to a journal or other publishing entity.  One of the primary driving forces behind the movement is the desire to freely share information without pay-walls or other barriers. Princeton University recently joined this movement by formally adopting an open access policy for scholarly work produced at the university (see “Princeton University Faculty Commit to Open Access” and “Open access policy adopted”).  Under this policy, the faculty agreed to grant the University a “nonexclusive, irrevocable, worldwide license to exercise any and all copyrights in his or her scholarly articles published in any medium, whether now known or later invented, provided the articles are not sold by the University for a profit, and to authorize others to do the same.”  The policy is based on recommendations from a proposal (pdf) presented by the university’s Ad-hoc Faculty Committee to study Open Access earlier this year. Princeton joins several other universities who have similar open access policies.  Many of these universities recently formed the Coalition of Open Access Policy Institutions (“COAPI”), which hopes to “collaborate and share implementation strategies and advocate on a national level for institutions with open access policies.”

Earlier this year,135 university leaders across the country joined together in a pledge (pdf) to undertake greater efforts in commercializing university technology and to “ensure that the knowledge and technological breakthroughs developed through campus-based research was rapidly and broadly disseminated to advance the nation’s social and economic interests.” On September 16^th of this year – the same day that President Obama signed the America Invents Act into law – more than 40 of these universities released announcements discussing some of the specific efforts they have undertaken or plan to explore in response to their pledge.  A news release (pdf) from the Association of Public and Land-Grant Universities contains links to these announcements, including from New York University, SUNY Buffalo, and the University of Rochester, among others. A recent blog post from the Office of Science and Technology Policy at the White House (“America's Universities Growing the Economy With “Lab to Market” Initiatives”) further outlines some of the efforts planned by these universities.

Case:  CARNEGIE MELLON UNIVERSITY v. MARVELL TECHNOLOGY GROUP (W.D.Pa. 9-28-2011) What happened: Carnegie Mellon University tech transfer office circulated an invention disclosure relating to disc drives. The tech transfer office was informed that a different inventor from Seagate had previous worked on a similar technology, but the Seagate inventor stated that, “[The Carnegie Mellon professors’] invention is related, but goes beyond my work and is probably more interesting." It is unclear whether the tech transfer office knew that Seagate had already filed a patent application on the earlier work of its inventor. Perhaps not surprisingly given the encouragement of the Seagate inventor, Carnegie Mellon filed patent applications on the work of its inventors. In the fullness of time, Seagate got a patent for its early work and Carnegie Mellon got two patents for its later developments and refinements. Carnegie Mellon proceeded to sue Marvell for patent infringement. Marvell is defended based on the theory that many of the claims of the Carnegie Mellon patents were anticipated by the prior art Seagate patent. Decision: No summary judgment of invalidity because the claims of the Carnegie Mellon patents had certain limitations not disclosed in the Seagate patent. Comment: It does not appear that the Seagate work was cited to the U.S. Patent Office during examination of the Carnegie Mellon patents. If the Seagate work was not cited, then this may have been due to the fact that the Seagate application was not published (this was back in the 1990’s) and further because the Seagate patent had not yet issued (it would not issue until several years after the initial Carnegie Mellon application was issued). It is not clear how much the Carnegie Mellon tech transfer office even knew about the specifics of the earlier Seagate work when they were prosecuting the Carnegie Mellon patent applications. It is difficult to say whether Carnegie Mellon would have been in a better or worse position if the tech transfer office had investigated the early Seagate work as soon as they found out about it, and had explicitly dealt with the early Seagate work in the text of the Carnegie Mellon patent applications themselves. Importantly, the district court opinion does not suggest there was any duty to investigate the early Seagate work on the part of the Carnegie Mellon tech transfer office. From a practical perspective, things seem to be going well for Carnegie Mellon on these patents at least at this point.

Case: Board Of Regents Of The University Of Wisconsin System v. Phoenix International Software, Inc. (7th Cir., Aug. 5, 2011) What happened:

This case presents complex questions about the law of trademark and the law of sovereign immunity, as the latter applies to a state university. . . . Their dispute centers around two computer programs, each of which holds the registered trademark “CONDOR.” Their dispute centers around two computer programs, each of which holds the registered trademark “CONDOR.”

Decision: On the trademark issue, the appeals court held that the issue of trademark infringement by the university software product was sufficiently close such that a trial would be needed to decide that issue. On the sovereign immunity issue, the state university waived its sovereign immunity when it filed suit in the federal district court seeking to reverse a decision made by the Trademark Office. Comment: Be careful not to lose sovereign immunity by litigation conduct, such as the filing of lawsuits.

Article: At the Chronicle Of Higher Education website, Alex Campbell reports that UNC has put in place measures to prevent and minimize unauthorized file sharing by students. Specifically, computers that have file sharing software will not be allowed to connect to the campus network unless and until that student/computer is awarded a “hall pass.” This hall pass involves a student pledge to report illegal file sharing, and apparently some education on copyright law. Interesting Quote:

The university has already seen a big drop in the number of dorm computers that use file-sharing software, from about 1,000 last year to about 50 this year. Of those 50, about half have opted for the hall pass. The other half remain quarantined and unable to access the network, officials say.

Case: Nuvo Research Inc. v. McGrath (filed August 15, 2011, N.D. Cal.) What allegedly happened: In a complaint filed on August 15, 2011 in the Northern District of California court, Nuvo Research Inc. alleges that a UCSF professor, who had worked as a consultant for Nuvo, applied for a patent on an ALS (sometimes called Lou Gehrig’s Disease) drug that others at Nuvo invented. The university was not sued. The professor is currently performing clinical trials on the drug with ALS patients in conjunction with his own company. Comment: There seems to be some concern that this law suit could slow or stop the clinical trials of the ALS drug.

On September 8, 2011, six higher education related institutions released a joint statement endorsing the Leahy-Smith America Invents Act as passed by the Senate. The six institutions are the Association of American Universities, the American Council on Education, the Association of American Medical Colleges, Association of Public and Land-Grant Universities, the Association of University Technology Managers Council on Governmental Relations. The statement is up at the American Council on Education website. Interesting quote:

We appreciate that the concerns of universities and medical colleges were addressed in ways that ensure our institutions’ ability to carry out their public missions. These institutions are the nation’s principal source of the basic research that expands the frontiers of knowledge. The patent system plays a pivotal role in helping them transfer the discoveries made in their laboratories to the commercial sector for development into products and processes that benefit society. The associations’ position on patent reform closely followed recommendations by academic and industry leaders convened by the National Academies in 2004.

Association of Corporate Counsel website has an article about corporate counsels’ dealings with universities in the context of intellectual property intensive joint ventures. Much of the article is about practicing due diligence to be sure that patent ownership, patent equitable ownership and/or duties to assign future applications are clear and consistent as between the corporation and the university. the article then touches on a sometimes-sticky issue:

Finally, corporate counsel should request a meeting with the significant contributors to the inventions. Counsel for the university or nonprofit may not want to grant this request because the university often takes the position that the inventors are not essential to the negotiation process; however, it is critical to assess the inventor’s understanding of the arrangement and whether the inventor will continue to cooperate. Unlike large corporations, most universities and nonprofits provide a royalty stream to inventors associated with the licensing fees or revenue earned on those inventions. Since many of the inventions licensed are very early stage, it will be critical for the eventual commercial success of the technology to maintain an on-going dialogue with the inventor, and most importantly, include a “right of first refusal” or similar mechanism to ensure that as the inventor continues research on the basic idea, any improvements will be owned by your client.

Of course, whether extensive dialogue between the corporation and professor(s) will help things go smoothly, or otherwise, will depend upon the personalities and sophistication of those involved in a given university/corporate jv, but it is easy to understand why the corporation would want such a line of communication open.

From: An August 3, 2011 Intel press release:

These centers represent the next $30 million installment of Intel’s recently announced 5-year, $100 million ISTC program to increase university research and accelerate innovation in a handful of key areas. As with previously announced ISTCs for visual computing and secure computing, the new centers encourage tighter collaboration between university thought leaders and Intel. To encourage further collaboration, the ISTCs use open IP models with results publically available through technical publications and open-source software releases. (emphasis added)

Question: Much open source software has restrictions attached to it. Is it prudent to put legal oversight on these sorts of computer centers to make sure third part “open source restrictions” are complied with? Maybe this depends upon whether these computer centers will ever generate commercial software, or whether they will always remain uncommercialized.

Case: WIAA. v. GANNETT CO., Docket Number 10-2627 (7th Cir. 8-24-2011) What happened: As the governing body for middle and high school athletic programs in Wisconsin, the Wisconsin Interscholastic Athletic Association (WIAA or Association) sponsors statewide post-season tournaments. In 2005, WIAA contracted with American-HiFi, a video production company, to stream its tournament events online. Under this contract, American-HiFi has an exclusive right to stream nearly all WIAA tournament games. Gannett argued that the First Amendment forbids WIAA, as a government agency, from granting exclusivity with respect to the right to stream video of its athletic contest performances. Decision: Governmental entities can grant exclusivity in performances. There is no First Amendment problem in WARF doing what it did. Interesting quote: Among other reasons for denying the First Amendment claim here, the Court noted the devastating impact that claim's like Gannett's claim here could have on the normal business of other governmental entities:

[T]he Wisconsin Alumni Research Foundation (WARF)patents innovations made by the scientific community at the University of Wisconsin at Madison. The University relies on a private party, WARF, to solicit and obtain third-party licensing fees. The revenue from these agreements is substantial: WARF currently pays an average of $45 million annually to the University and has returned $1.07 billion to the school since 1928. See generally Wisconsin Alumni Research Foundation, www.warf.org (last visited Aug. 19, 2011). Gannett’s claim here would cast a shadow over the commercial licenses that WARF sells, by implying that the First Amendment requires it to dedicate its inventions to the public. No case has ever come close to holding this.

At the Innovation website, Ben Ray Lujan cites a new study that shows the importance of tech transfer with respect to federally-funded technology. Moneyquote:

A major study of the current state of affairs of technology transfer across the federal government was recently released by the Institute for Defense Analyses Science and Technology Policy Institute . . . In the first such study in a decade, one of the major findings is that: “support from agency leadership and laboratory directors can have a marked effect on technology transfer and commercialization activities. For example, laboratory directors who support technology transfer may provide resources, flexibility and creative license to their ORTAs (Office of Research and Technology Applications]. Those ORTAs who are not supported by their laboratory leadership can be severely constrained.

This would seem to be common sense, but it is nice to see it acknowledged.