Earlier, in Wisconsin Alumni Research Foundation (WARF) v. Xenon Pharmaceuticals, the U.S. Court of Appeals for the Federal Circuit held that just because a case involves patents doesn’t mean that you automatically get federal jurisdiction. 

The court ruled that it has no jurisdiction over the case because it does not present a claim arising under the patent laws. Xenon Pharmaceutical looked to the mention of the Bayh-Dole Act  (35 U.S.C. 200 et seq.) in WARF’s complaint to get jurisdiction. 

In the end, the case was transferred to the United States Court of Appeals for the Seventh Circuit to resolve the issue — a case where WARF won a $1 million jury award against Xenon Pharmaceuticals in a dispute over licensing of WARF’s stem cell patent.

Xenon then filed a combined petition for panel rehearing and rehearing en banc that was rejected by the circuit judges in an order without any opinion.

Not happy with how the process went, Judge Rader (joined by Newman and Moore) issued a dissent saying:

While the panel dismissed the notion that the Bayh-Dole Act’s “mere inclusion” in Title 35 does not make it a “patent law,” it seems to me that this is actually a pretty good indicator. After all, Title 35 is itself entitled “Patents,” and Chapter 18, which encompasses only §§ 200-212, is called “Patent Rights in Inventions Made with Federal Assistance.”  Also, the language within some of the sections of the Bayh-Dole Act suggests its provenance as a patent law. 

For example, 35 U.S.C. § 201(d) defines “invention” as “any invention or discovery which is or may be patentable . . . .”  Section 201(e) explains that a “subject invention” is an invention conceived of or first reduced to practice by a contractor.  “Conception” and “reduction to practice” are familiar patent law terms of art.  Also, § 200 states that the Act intends “to use the patent system to promote the utilization of inventions arising from federally supported research or development . . . .” The Bayh-Dole Act is, “at its heart,” a patent law, albeit a patent law that employs some government contract rules to facilitate its patent-related policy objectives.

To resolve this dispute, some court will have to compare the claims of the pending patent applications of the WARF/Xenon agreement with the alleged “improvements,” and the contract’s use of patent infringement parlance to define this term will necessitate some sort of patent analysis, starting with construction of the pending claims. Thus, this is a patent dispute for still another reason.

Ultimately, the Patent Office may decide.  After PUBPAT filed formal reexamination requests, the U.S. Patent and Trademark Office (PTO) rejected the claims of three WARF patents (US 5,843,780, US 6,200,806 and US 7,029,913) that cover research using human embryonic stem cells.

The proceedings are currently ongoing.

See also: A Patent License Does Not Create A Suit Under Patent Laws

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  1. […] Patent Baristas placed an interesting blog post on Bayh-Dole Act Does Not A Patent Law Make (The Dissent)Here’s a brief overview […]

  2. The patents which are the subject of contracts in the Xenon case are not stem cell patents. They involve a much different technology.