Thursday, August 13, 2009

Former grad student Sclimenti still moving against Stanford

Joyce Liu and Eugenah Chou of The Stanford Daily provide new information on the lawsuit by former graduate student Christopher Sclimenti Ph.D. ‘02 against Stanford University and his former professor Michele Calos in an article titled
Former Ph.D. student accuses professor of plagiarism.
IPBiz had covered this story in the post Stanford Ph.D. student sues Stanford, Stanford prof over patents and copying thesis

The Stanford Daily article established that the former graduate student was correct about his assertion of inventorship:

In order to determine the inventorship of the patent, both the University and Sclimenti’s lawyer, Manuel de la Cerra M.S. ’97, obtained separate opinions from outside counsels.

The University’s opinion indicated that Sclimenti was not an inventor, while de la Cerra’s opinion stated that Sclimenti deserved to be named an inventor.

Since the two opinions were at odds, both parties agreed to an Alternative Dispute Resolution (ADR) conducted by a neutral party.

“Before the ADR process was completed, we had dueling opinions,” Dunkley said. “We agreed to rely on the outcome of that, and the University stood by its agreement to accept whatever the outcome was based on the neutral evaluation.”

The lawsuit states that on March 31, 2009, the ADR neutral “unequivocally confirmed that Sclimenti was indeed a co-inventor on [the two patents].”

According to de la Cerra, Stanford petitioned to correct the inventorship and list Sclimenti as one of the co-inventors in May 2009.

Although he received the inventorship credit, Sclimenti was still dissatisfied that Stanford did not take any further action, and added 14 other claims to his lawsuit on June 11.

A humorous part of the article is that the Stanford Daily quoted Stanford Professor Mark Lemley (remember, Lemley is the guy that wrote Gary Boone invented the integrated circuit) in the following way, PRIOR to the above text establishing the grad student inventor was CORRECT in his assertion of inventorship:

Law Prof. Mark Lemley stated that the norms of the science world differ from the norms of the patent world.

“The norm of the science world is that lots of people go on authorship of papers, even if they aren’t the head of the lab [or] writing portions of the paper,” Lemley said. “In patent law, you’re supposed to define and list as inventors people who contributed something to the patentability.”

Wow! We'll return to that quote sometime. Note in this case, Sclimenti's name got dropped after a restriction requirement. The issue isn't "patentability." The issue is one of a contribution to the invention of the claims of the elected claim group.

**As a result of the ADR, the former grad student got a check:

One of the claims in the amended lawsuit is that Stanford, at the time of filing, failed to pay Sclimenti his share of the licensing fee. In accordance with Stanford’s licensing protocols, inventors are entitled to 28.3 percent of the patent’s profits.

But in late July, the University sent a check to Sclimenti.

“The University cut a check to him for the full amount he would have received, plus interest, dating back to the date when those royalties would have been paid, so that he was completely made whole on any royalties that he would have been entitled to as an inventor,” Dunkley said.

According to Dunkley, the University would have sent the check regardless of the amended suit—it was just a matter of processing.

Sclimenti has not decided whether or not he will deposit the check, de la Cerra said.

**As to the copying the thesis issue, the Stanford Daily apparently did not read the prior post on IPBiz. The Daily noted:

Another allegation is that Calos copied parts of Sclimenti’s Ph.D. dissertation word-for-word in another patent application that does not list him as a co-inventor and has yet to be approved. Calos was the principal advisor of the committee that approved his dissertation.

The Daily was able to verify this claim. Twenty paragraphs of Sclimenti’s dissertation were copied into another patent application filed on Aug. 4, 2005. Calos appears to have shuffled words in some areas, but it is recognizable as Sclimenti’s dissertation.

Although Dunkley declined to comment on the plagiarism claim, he did insist that Stanford had corrected the royalties issue.

IPBiz notes that if the copying did not relate to a claim of the patent application, this is not a patent law issue.

The Stanford Daily article did not mention Poetic Genetics, a company co-founded by Calos in 2002 to commercialize gene therapies based on the technology.


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