Wednesday, September 30, 2009

Board of Trustees v. Roche Molecular

Propriety of Appeal. The district court granted summary judgment of obviousness, which the plaintiff appealed, but the defendant appealed adverse decisions regarding ownership and licensing. The Federal Circuit concluded that its “arguments would expand its rights under the judgment and, thus, are properly the subject of a cross-appeal.” (p. 7.) Namely, under the invalidity decision the defendant was free of worry from the asserted claims, but not necessarily the entire patent, as it would be under the ownership counterclaim.

Standing. The court never addressed the obviousness issue. Instead, it focused on the defendants’ claim regarding ownership. The court found that a state statute of limitations barred the defendants’ claim for ownership. However, the same facts on which the claim for ownership was based lead the court to conclude that the plaintiff did not have standing to bring its infringement case. Therefore, the judgment of invalidity was vacated and the case was remanded so that the case could be dismissed for lack of jurisdiction. The district court’s judgment regarding the defendants’ counterclaim was affirmed since they had standing to bring that claim. (p. 25.) The opinion is here.