Posts Tagged: "University of California"

In late August, the U.S. International Trade Commission published a notice of institution of a Section 337 investigation on behalf of the Regents of the University of California, which is now underway. The University filed a complaint in July alleging that a series of major retailers including Amazon.com, Bed Bath & Beyond, IKEA, Target and Walmart have infringed patents through the importation of certain filament light-emitting diodes (LEDs) and products containing the same. The ITC action is part of an enforcement campaign that is being hailed by the firm representing the university as a “first-of-its-kind university-led effort” to vindicate patent rights owned by the institution.

On Tuesday, June 24, the Patent Trial and Appeal Board (PTAB) declared an interference proceeding  between a collection of entities that are on opposing sides in the race to commercialize CRISPR-Cas9 genomic editing technologies. The patent interference will decide if inventors from the Regents of the University of California, the University of Vienna and the Umea University of Sweden were the first to invent certain methods for gene editing in eukaryotic cells, or plant and animal cells, that are covered by patent claims which have been issued to the Broad Institute, the Massachusetts Institute of Technology (MIT) and Harvard College. The patent interference involves 10 patent applications that have been filed by the University of California group and 13 patents that have been filed by the Broad Institute group. These two groups have been facing off in a series of legal battles regarding which side can properly claim to be the rightful inventor of perhaps the world’s most widely applicable gene editing technology useful for treating diseases, improving life science research and increasing the rate of biotechnology innovations.

The University of California (“UC”) and The Broad Institute, Inc. (“Broad”) are among the leaders in the development of CRISPR technology.  Both UC and Broad filed patent applications for claims broadly drawn to CRISPR-Cas9 systems and methods of DNA editing.  These parties are currently engaged in litigation over patents concerning the potentially most lucrative application of CRISPR technology – the use of CRISPR-Cas9 in plant and animal (eukaryotic) cells.  The outcome of this litigation will affect control of the CRISPR platform and development of the technology.

I was just thinking how often someone teaching intellectual property law leads the attack on the patent system when “Racing for academic glory and patents: Lessons from CRISPR” appeared. It sounds a dire warning that “overly broad patents must be reined in” as the passage of the Bayh-Dole Act “invoking patents as a mechanism for promoting commercialization of federally funded research” set off an “often socially wasteful race…for glory in academic research and in the patent sphere.” What’s particularly striking is that neither the paper nor the articles hyping it provide any evidence the CRISPR patents are restricting research or blocking commercial development. Indeed, most signs point in the opposite direction… Doesn’t a finding by NIH that there’s no evidence of any problems with how universities are licensing their CRISPR patents deserve to be mentioned? It seems like a pretty important point.

On Wednesday, October 25th, the Cambridge, MA-based medical research center The Broad Institute filed a brief with the Court of Appeals for the Federal Circuit in response to an appeal filed by the University of California stemming from patent interference proceedings playing out at the Patent Trial and Appeal Board (PTAB). The Broad Institute’s filing is the latest salvo in a patent battle which has played out between developers of a gene editing technology, which could prove to be very important to the future of fighting disease in humans.

At the center of the legal spat is the proper assignation of a series of patents covering DNA sequencing technologies, which UC alleges were developed while the inventor was under an agreement obliging him to assign those patents to UC… Chen’s work in the UCSC biophysics lab led to the development of a series of inventions related to individually addressable nanopores, which can be used to characterize a nucleic acid sequence in a nucleic acid molecule. These inventions were described in patent applications filed by UC with the U.S. Patent and Trademark Office (USPTO) listing Chen as an inventor… Instead of following his contractual obligations to assign his invention to UC, Chen allegedly filed patent applications and received patent grants assigned to medical technology firm Genia Technologies, a company he founded in March 2009 after leaving UCSC.

The problem with this theory is that the Bayh-Dole Act does not provide agencies the authority to regulate product prices. The law allows universities and contractors to own inventions made with federal funding so that they can be effectively commercialized. Congress included safeguards in case a dominant company licensed a breakthrough technology with the deliberate purpose of suppressing it, perhaps because it threatened an existing product. If good faith efforts are not being made to bring the invention to “practical application” so it is available on “reasonable terms” the funding agency can march in requiring that another company be licensed “upon terms that are reasonable under the circumstances.” Agencies can also march in if the developer is not able to produce enough product to meet public health or safety needs. In none of these situations is the government empowered to march in just because it doesn’t like a price.

In the middle of February, the scientific journal Nature Biotechnology published a paper from a team of researchers at Wake Forest University which reported a breakthrough in creating transplantable human organs with the use of an integrated tissue-organ printer. The Wake Forest breakthrough provides 3D printed tissues with a biodegradable material to serve as a temporary framework for cells as they take hold in a host body; the tissue material also enables oxygen and nutrients to flow into the printed organ more easily. Still, issues in tissue complexity for certain organs remain, although we are closer than ever to the world’s first 3D printed liver thanks in part to work performed by engineers at the University of California, San Diego.

Powered exoskeletons, which can improve a person’s gait, are starting to gain traction as a new area of bionic development, which could potentially improve the lives of many. Recently, the California-based bionics firm suitX was selected as the winner of the $1 million top prize at the event for its pediatric medical exoskeleton at the 2016 UAE AI & Robotics Competition for Good. The company’s Phoenix exoskeleton is a modular unit which has a maximum weight of 27 pounds and is adjustable in size. The pediatric exoskeleton that won the award is based on the company’s Phoenix exoskeleton platform. The pediatric version of the Phoenix exoskeleton has been envisioned for helping children suffering from cerebral palsy or spina bifida to gain ambulatory mobility.

Innovation in the automotive sector was a huge story, both for the types of technologies being developed and the companies pursuing the R&D in that field. Drones and robotics also played a role in other top patent applications which we’re profiling today. Rounding out our list of top 2015 innovations includes an emotion analysis system for financial security, wireless charging schemes, low-power communications for wearable devices and a greenhouse window that can generate electricity while improving crop yield.

The University of California maintains a portfolio of 11,556 active patent grants. Patented technologies which are currently available for licensing through UC include laser scanners for eye tracking, cardiovascular disorder treatments and environmentally friendly water treatment techniques. In 2013, the Regents of the University of California were issued 399 patents by the U.S. Patent and Trademark Office, tied for 89th-most. A great percentage of UC’s 2014 inventions were related to providing methods involving nucleic acids, host cells and pharmaceutical compositions.