Cases & Developments

Opinion affirming summary judgment in favor of the U.S. Government. Plaintiff, the University of South Florida (USF), sued the United States, alleging infringement of its patent entitled “Transgenic Mice Expressing APPK670N,M671L and a Mutant Presenilin Transgenes,” for mice used in studying Alzheimer’s Disease and other neurogenerative disorder, by allowing a third party to use and manufacture the mice, which were developed, in large part, by USF researchers. At issue was whether research, which had been delegated to USF researchers by two former USF professors who moved to the Mayo Clinic (Mayo) in December 1996, was supported by a grant awarded to Mayo by the National Institute on Aging, thereby entitling the Government to a license to practice the patent under the Bayh-Dole Act. USF urged that Bayh-Dole is not triggered since the invention was reduced to practice in April 1997, but Mayo did not execute its subcontract with USF to pay for the work under the NIH grant until November 1997. In affirming summary judgment in favor of the U.S. Government, the Federal Circuit upheld the Government’s right to the invention, noting that “against the well-known background of the Bayh-Dole Act Regime” USF accepted funding under the grant that was designated for past-work. The court found this consistent with the “statutory policy to ‘ensure that the Government obtains sufficient rights to federally supported inventions’” and noted that it is common for research work to continue without interruption with the expectation that it will be covered by a subsequent grant award.