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SCOTUS rejects Duke case

Research at Duke received a potentially "devastating" blow on June 27, as the U.S. Supreme Court declined to hear the University's appeal on a verdict stemming from a five-year-old patent infringement lawsuit brought forth by former physics professor John Madey. The decision leaves in place an earlier ruling by a lower court limiting universities' use of patented technologies in research.

With the court's decision not to hear the case, Madey has scored a major victory. Duke and other research universities, however, could find academic research more difficult and more expensive unless further litigation reverses the situation.

"People have predicted scenarios from the 'totally chaotic' to 'not that much change.' It's hard to believe it's going to be 'not that much change,'" said Vice Provost for Research James Siedow. "On the other hand, if it becomes totally chaotic, it's hard to believe someone from Congress wouldn't step in.... In other words, I don't know that the sky is falling, but I don't know that we're walking down a garden path either."

The University's official reaction seems to veer toward the 'sky falling' scenario.

"Unless the Congress provides a legislative remedy, universities may need to alter their research practices to such an extent that basic scientific research cannot continue on a consistent course," said David Jarmul, associate vice president of news and communications, in a statement.

Madey, who invented the free electron laser and holds several patents on it, came to Duke in 1989 to run the Free Electron Laser Laboratory. After being dismissed from the University in 1997, he filed suit, claiming that the University was violating patent law by continuing to run the lab in his absence.

The University countered that it had a legal right to use the lab and its contents under the "research exception," which allows scientists and others conducting experiments to use devices, research tools or procedures that are covered by patents held by other parties, as long as those researchers are using the patented objects or technologies for non-business purposes.

A federal district court in Greensboro agreed that Duke's use of the lab was included in the research exception and ruled in favor of the University, but a Washington, D.C., appeals court reversed the verdict. The appeals court ruled that the research exception was for very limited uses - for amusement, to satisfy idle curiosity or for strictly philosophical inquiry" - casting doubt on whether the research exception was even applicable for university research.

This ruling prompted Duke to try to take its case before the Supreme Court, where it argued that the appeals court verdict "seals the coffin on the experimental-use exception for private universities."

More than two dozen universities and academic organizations signed amicus briefs in support of Duke and urged the Supreme Court to take the case, arguing that unless the verdict were overturned, university researchers would be impeded by having to constantly check whether their activities violate patent laws.

"It could add considerably to the cost of doing research," Siedow said, "and it could conceivably make research a lot more difficult if basically... anytime you do an experiment, [you have to make] sure you're not running afoul of anyone's patent when you're doing that. That could get extremely complicated."

Randall Roden, Madey's lawyer, dismissed these arguments. "The idea that they shouldn't make every effort to have a patent-compliance policy doesn't make sense," he told The Chronicle of Higher Education.

Kenneth Sibley, an adjunct professor at Duke and patent law expert, said he was surprised by some of the substantive issues voiced by the Supreme Court in declining to hear the case. "I think the current [Presidential] administration - and the Supreme Court did seek the comments of the administration through the solicitor general - has expressed concern about overreaching through the use of the patent laws and the improper withdrawal of technology from the public domain. This case would seem to tie into those concerns," he said.

Sibley added that the next step for the case will likely be a return to the federal district court in Greensboro for more fact-finding and possibly a full trial.

A group including Provost Peter Lange and Dean of the School of Medicine Sandy Williams will meet later this month to discuss the ramifications of the most recent developments, and where the University will go from here.


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