If the Regents of the University of California and the California Institute of Technology see big paydays in their fight against tech bigwigs, could that further fuel the university patent boom?
A Bloomberg Law analysis of patent infringement lawsuits involving the top five universities that were granted U.S. patents last year offers insight into higher education's courtroom battles against high tech in order to secure damages.
The Regents of the University of California, which led 100 universities around the world in granted utility patents in 2016, have filed more than a dozen patent infringement suits in U.S. district courts in the last five years. A utility patent protects the invention of a new product or machine as opposed to a design patent, which covers a product's look.
UC is currently locked in a battle against Boston Scientific Group for allegedly infringing its patent on technology for the treatment of atrial fibrillation, or abnormal heart rhythm. It has also settled some cases, including suits brought against Facebook Inc., the Walt Disney Co., and Wal-Mart Stores Inc. over media display technology, in recent years.
Royalties from patent licensing help universities generate big bucks. Despite the headaches and costs of litigation, the value of patents can be exceptional. Consider a June 6 court ruling, upholding a jury's verdict, that Apple pay $234 million for computer chip technology patent infringement to patent owner Wisconsin Alumni Research Foundation (WARF).
WARF, which handles patent licensing for the University of Wisconsin-Madison’s patents, also won an ongoing royalty of $2.74 per infringing iPhone, the judge ruled. But multimillion dollar gains are few and far between when universities litigate. And whether WARF’s success emboldens more schools to pursue complaints in hopes of also winning big remains to be seen.
Since 2012, other university litigants include the California Institute of Technology, which has filed five patent infringement suits in district courts, including a 2016 case now underway in which it sued Broadcom Ltd. and Apple over patents covering software code in Wi-Fi products.
Massachusetts Institute of Technology (MIT) and Stanford University have settled various patent infringement cases in the last five years but have brought none that are now ongoing.
Universities also take a risk when they sue for infringement that those they're accusing will successfully petition to get their patents invalidated.
In 2015, for instance, a lawsuit brought by MIT against Apple and Micron Technology Inc. over laser-cutting technology used in making semiconductors for consumer electronic goods ended when Micron succeeded in having MIT's asserted patents invalidated at the Patent Trial and Appeal Board.
Stanford, along with its exclusive patent licensee Thermolife International LLC, filed 30 cases in the last five years, alleging that some companies that make nutritional and dietary supplements infringe its patents related to the treatment of vascular diseases. Those have led to numerous settlements.
Tsinghua University does not appear to be involved in U.S. district court cases.
The top five global universities that were granted the most U.S. utility patents in 2016, according to a list based on data from the Patent and Trademark Office and published by the National Academy of Inventors and the Intellectual Property Owners Association, are:
The Regents of the University of California – 505 patents
Massachusetts Institute of Technology – 278 patents
Stanford University – 244 patents
California Institute of Technology – 201 patents
Tsinghua University/Graduate School at Shenzhen, Tsinghua University – 181 patents
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