This case, and others such as the Eolas (UCal/Berkeley) litigation against Microsoft, raise interesting policy issues. Is it in the public interest for academic inventors, working through the Bayh-Dole Act using federal funds or otherwise, to generate patents that are asserted against other companies, who have actually commercialized the technology? The point of the Bayh-Dole Act was to harness the inventive energies of non-profits, including professors at universities working on federal grants, by providing a mechanism to commercialize such inventions. If the ideas are already being commercialized without the help of the academics, a prime justification for Bayh-Dole assistance disappears. Aggressive patent enforcement activity by universities, whether direct as in the University of Rochester COX-2 case, or indirect as with Pinpoint/Pennsylvania or Eolas/Berkeley, justifies the policy rationale of the Madey v. Duke University case.
[US 5,758,257 does not mention any constraints imposed by federal funding. As of Dec. 7, the '257 patent has been cited by 104 US patents, most recently by US 6,820,277.]