Friday, April 21, 2006

Lemley confused on Columbia's Axel patents?

In "Patenting Nanotechnology," published in the Stanford Law Review in November 2005, Mark Lemley stated "for one reason or another, the basic building blocks of what might be called the enabling technologies of the twentieth century - including the computer, software, the Internet, and biotechnology - all ended up in the public domain."

One of the examples to support this assertion was the Axel patents of Columbia University. Lemley wrote: Axel received one on his roughly
contemporaneous methods of inserting genes into a cell, and both
licensed their patents for significant revenue. n44 But largely because they were
funded by the [page 611] federal government before the passage of the Bayh-Dole Act, they granted nonexclusive licenses to all comers, n45 meaning that their patents raised the cost of practicing biotechnology but did not prevent anyone from
entering the downstream market.

Lemley did not mention litigation involving the Axel patents, which was reported by, among others, Fortune magazine in September 2005 and discussed in IPBiz:

In the late 1970s three Columbia researchers, Richard Axel, Michael Wigler, and Saul Silverstein, all working with funding from the NIH, figured out a way to vastly improve the efficiency of a technique used in genetic engineering. They filed for patents in February 1980—prior to Bayh-Dole. But the NIH assigned the title to Columbia once the university promised to "use all reasonable effort to bring the [Axel patents ] to the commercial market through licensing on a non-exclusive, royalty-free, or reasonable royalty basis." The federal agency even admonished Columbia not to engage in "repressive" licensing practices.

But when the patent life ran out, Columbia announced that—surprise—it had secured a new patent, issued in 2002, that won't expire until 2019. (The patent application was filed in secret in 1995.) And the invention, as it turns out, comes out of the original taxpayer-funded work done by Axel, Wigler, and Silverstein long ago (and somehow not included in the three patents Columbia had already received). University lawyers had pulled off the trick by filing a secret "continuation" application (which keeps an original patent disclosure alive for possible new claims to be added) and then abandoning it—repeating this procedure again and again until the clock was about to run out. So the patent granted in 2002, noted federal district court Judge Mark Wolf, "relates back to its great-great-great-great-great-great-grandparent application" in 1980.

In a SUBLIME IRONY, the district court in Biogen v. Trustees of Columbia University, 332 F. Supp. 2d 286 (D Mass 2004) cited Lemley (and Moore on Ending Abuse of Patent Continuations), although for the EXACT OPPOSITE PROPOSITION as appeared in "Patenting Nanotechnlogy":

-->In the instant case, the '275 patent was issued twenty-two years after the application from which it derives was filed. There were several delays in the prosecution of the application. Columbia [University] has provided no evidence, or even argument, to explain why it took twenty-two years to obtain the '275 patent or to justify the delays in that process. n6 The timing of its issuance strongly suggests that Columbia deliberately delayed obtaining a patent that it always intended to secure in order to make it effective just as the other Axel patents expired and thus increase its commercial value by maximizing the period in which the public would have to pay Columbia royalties for the use of the Axel patents.<--

n6 "Analyzing the 2,224,379 patents that issued from 1976 through 2000, two commentators found that prosecution of these patents 'took an average of 2.47 years from the earliest claimed filing date to issuance date.'" Pls.' Mem. in Supp. of Mot. for Prelim. Injunction at 29 n.8 (quoting Mark A Lemley & Kimberly A Moore, "Ending Abuse of Patent Continuations," 84 B.U. L. Rev. 63, 71 (2004)).

See IPBiz and also IPBiz.

**Separately, Lemley in "Patenting Nanotechnology" asserted that Gary Boone was the inventor of the integrated circuit. Lemley wrote: The integrated circuit was itself an improvement in the field of computing, a way of building transistors (an invention discussed above)[page 612] directly into a computer chip by using charged silicon, a semiconductor. (...) Gary Boone was ultimately declared the winner, but not until 1999, twenty-eight years after the first patent application was filed.

In reality, Noyce and Kilby were the inventors of the integrated circuit. Before the resolution of the patent interference between Noyce and Kilby, the companies (Texas Instruments and Fairchild) agreed to cross-license. All third parties had to pay patent royalties to BOTH TI and Fairchild, thus not supporting Lemley's contention in any way, shape, or form.


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