Each day, universities conduct and invest in research that has an impact on science, medical, and technology industries. And while schools of higher education serve a larger purpose, patenting those research results and licensing those patents to industries can generate much-needed funds that benefit those universities.
Patents are assets, even if they are not immediately used. As such, campus assets borne from technology created by colleges and universities usually can be licensed, sometimes later in their useful lifetimes. Dormant patents represent potential revenue sources for colleges and universities who find that those patents are infringed upon.
A growing number of universities are hiring technology transfer managers who are responsible for generating revenue by licensing out university patents to industry.
With apologies to the crusty old prospector in the 1948 western Yellow Sky, “Thar’s gold in them thar patents!” New York University, the University of California, the University of Colorado, Cornell, and Stanford have hit pay dirt pursuing patent infringers. Shouldn’t every university’s leadership team be wondering if they might be sitting on a goldmine?
More and more owners of dormant patents are discovering gold—sometimes lots of it—in their patent portfolios. Here are a few more comparatively recent examples:
• 1999: The University of California and Eolas Technologies filed a patent infringement lawsuit against Microsoft Corp. In 2003, the case went to trial, and the jury awarded UCal and Eolas $520 million. In 2005, Microsoft appealed the decision, and the Court of Appeals for the Federal Circuit sent it back to District Court to be retried. In August 2007, the parties settled the claim for an undisclosed amount.
• 1999: The University of California filed a patent infringement lawsuit against Genentech. The case resulted in a $200 million settlement for UCal.
• 2002: Cornell University filed a patent infringement lawsuit against Hewlett-Packard Co. In 2008, the case went to trial, and the jury awarded Cornell $184 million. Hewlett-Packard announced its intention to appeal the award, and the judge reduced the award to $53 million.
• 2003: Texas Instruments and Stanford University filed a patent infringement lawsuit against Conexant Systems. In 2006, the case went to trial, and the jury awarded TI and Stanford $112 million. Shortly after the trial, the parties settled the case for $70 million.
According to Chris Holman of the University of Missouri-Kansas City School of Law, in just this decade, universities filed 139 patent infringement lawsuits. Although most of these lawsuits were filed by exclusive licensees with universities joining them as co-plaintiffs, 51 of these lawsuits were filed by universities alone.
Patent and licensing history was made on June 29, 2009, when a jury in Marshall, Texas, granted the largest patent award verdict in U. S. history.
Call it a jury verdict, or perhaps the largest university windfall ever awarded, but Abbott Laboratories was ordered to pay $1.6 billion to Centocor, a Johnson & Johnson subsidiary, because Abbott Laboratories’ Numira arthritis treatment was found to infringe Centocor’s U.S. patent.