Tuesday, December 07, 2004

Pinpoint suit against Amazon dismissed without prejudice

At the time Pinpoint filed its patent infringement suit against Amazon.com, Borders, and others, the patent in question was assigned to the University of Pennsylvania. Two of the inventors were professors at the University of Pennsylvania and helped develop the technology with the founders of Pinpoint. [The decision was handed down by Judge Richard Posner, sitting by designation.]

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.]


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