Please ensure Javascript is enabled for purposes of website accessibility

University, drugmaker co-own patent, justices affirm

WASHINGTON — Ownership of a patent for technology to detect HIV levels in patients’ blood was correctly split between Stanford University and the pharmaceutical giant Roche, the Supreme Court ruled Monday.

By a 7-2 vote, the high court upheld a lower court’s decision making the company and the university co-owners of a patent for technology in HIV test kits.

Stanford asserted it owned the technology because its discoverer worked there. The 1980 Bayh-Dole Act allows universities to retain rights to research funded by federal grants.

But Stanford researcher Mark Holodniy also signed a contract that gave Roche the patent to anything that resulted from their collaboration. The U.S. Circuit Court of Appeals for the Federal Circuit made Roche and Stanford co-owners, and the high court agreed.

“Nowhere in the Act are inventors expressly deprived of their interest in federally funded inventions,” said Chief Justice John Roberts, who wrote the majority opinion.

Justices Stephen Breyer and Ruth Bader Ginsberg dissented.

“I cannot so easily accept the majority’s conclusion — that the individual inventor can lawfully assign an invention (produced by public funds) to a third party, thereby taking that invention out from under the Bayh-Dole Act’s restrictions, conditions and allocation rules,” Breyer said.

The case is Stanford University v. Roche, 09-1159.

In other action Monday, the court:

* Said the family of a police chief convicted of extortion doesn’t get attorney fees from his victim, another police chief. The high court ruled for Vinton, La., police chief Ricky Fox, who doesn’t want to pay lawyer fees to the family of former chief Billy Ray Vice. Vice was convicted of extortion after threatening to reveal damaging information about Fox unless he dropped out of the police chief’s election. Fox won the 2005 election. Fox later sued Vice, but the 5th U.S. Circuit Court of Appeals said the lawsuit was frivolous and ordered Fox to pay Vice’s attorney fees. A unanimous high court overturned that decision. Vice died last year.

* Denied an appeal by former Illinois Sen. Roland Burris, who was appointed to the U.S. Senate seat once held by President Barack Obama but did not get a chance to run for a full term. The court said it will not consider overturning the election of Sen. Mark Kirk. The justices also refused to hear an appeal from state officials who objected to a court order to hold a special election as well as a regular election for Obama’s old seat.

* Refused to hear an appeal from actor Wesley Snipes, convicted in 2008 on three misdemeanor counts of willful failure to file income tax returns. Snipes started a three-year term in a federal minimum security prison in December. Snipes wanted his trial held in New York City, where he says he lived, but the government prosecuted him in Florida, where Snipes held a driver’s license. Lower courts refused to let him have an evidentiary hearing on that issue.