Wednesday, June 17, 2009

Stanford Ph.D. student sues Stanford, Stanford prof over patents and copying thesis

As noted by IPBiz earlier in June, the CAFC in Larson v. Correct Craft talked a great deal about Chou v. University of Chicago, 254 F.3d 1347, 1358 (Fed. Cir. 2001) and noted that neither the Chou nor Larson case decided whether a purely
reputational interest is sufficient to confer standing for a ยง 256 claim.

There is another case, similar to Chou, involving a Ph.D. from Stanford who asserts he was cheated out of patent rights by Stanford and a Stanford professor.

Ben Butkus writes in genomeweb/biotechtransferweek:

A former Stanford University graduate student who last year sued the school and his faculty advisor for allegedly excluding him from patents related to a gene-modification technique he helped invent, this week filed an amended suit claiming that the advisor also plagiarized his PhD dissertation and lab notebooks to support additional patent applications, among other alleged misdeeds.

The former student, Christopher Sclimenti, also alleges that Stanford and the faculty member, genetics professor Michelle Calos, have financially benefitted from licensing the patents to at least one outside entity while denying Sclimenti his share of the profits, according to Sclimenti's lawyer.

The initial Sclimenti law suit was about misnaming of inventors (specifically an omission of a student), analogous to the Chou case against the University of Chicago.. Although Butkus uses the concept plagiarism to describe the added claims, the actual cause of action is likely copyright infringement. [There is NO federal cause of action for plagiarism.] As to copying a Ph.D. thesis, one saw copyright infringement claims in the Cha/Kim matter as to Kim's Ph.D. thesis. Copyright infringement as to a lab notebook is interesting, but one must go through the work-for-hire doctrine
(ie, who owns the copyright in the notebook?)

Butkus writes: The amended lawsuit, filed in the US District Court for the Southern District of California, alleges some 15 charges against Stanford and Calos It's not clear if Sclimenti included a reputational interest claim; in view of Larson he should have.

The patents at issue are US patents 6,808,925 and 7,141,426, entitled "Altered recombinases for genome modification." Both name Michelle Calos, the professor/advisor, as the sole inventor.

Of the initial cause of action, Butkus writes:

That complaint, filed in the same court, alleged that Sclimenti, who obtained his PhD from Stanford in 2002 in cancer biology and molecular genetics, was originally named as a co-inventor on the application for the '925 patent, which Stanford's Office of Technology Licensing filed on behalf of Calos and Sclimenti in February 2001.

Sometime around July 2002, while the US Patent and Trademark Office was prosecuting the filing, Sclimenti claims the university removed his name from the '925 application. Meantime, in April 2004 Stanford and Calos filed an application for the second patent naming Calos as the lone inventor.

In October 2004, the '925 patent issued; and in November 2006, the '323 patent issued. Both patents name Calos as sole inventor and Stanford as sole assignee.

According to various documents supporting the claim, Stanford removed Sclimenti's name from the '925 patent application after it amended certain of the application's claims to satisfy USPTO requirements for awarding the patent.

But according to Manuel de la Cerra, a Carlsbad, Calif.-based intellectual property lawyer representing Sclimenti, Stanford and Calos modified the patent application at or around the same time the Stanford OTL was negotiating a licensing agreement for the IP with Poetic Genetics, a company co-founded by Calos in 2002 to commercialize gene therapies based on the technology.

**See also


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