And “as two claims in equity,” because the Stanford University Assignment Obligation came chronologically before the Cetus Assignment Clause, and because Stanford University had subsequently obtained an assignment of the HIV RNA assay invention from Holodniy after it existed, that “should have meant that Stanford [University], not Cetus, would receive the [invention] rights.” (It’s not exactly clear from Justice Breyer’s dissent whether he was postulating this statement based on the Stanford University Assignment Obligation being “factually” first in time, or “theoretically” first in time, relative to the Cetus Assignment Clause).
With this complex / muddled / unclear factual record before it, 6 Justices of the Supreme Court agreed in that Bayh-Dole doesn’t automatically cause a transfer of invention rights that might be based on federally funded research to the contractor / grantor (e.g., Stanford University); even those rights must be assigned (be it by written assignment, agreement to assign, or some “operation of law” other than Bayh-Dole) by the inventor / researcher to the contractor/grantor.
But what those 6 Justices didn’t address in case that title to the HIV RNA assay invention belonged ultimately to Roche.
case that is glossed over (or at least not addressed directly) by the Supreme Court majority (as well as others in the patent “blogosphere”) is what happens when you have a present assignment (or at least a contractual obligation to assign) of invention rights that don’t exist at the time of the assignment (aka “future invention rights”).
Should (as the Federal Circuit held) Roche (or more appropriately its predecessor, Cetus) by using the language “I will assign and do hereby assign” (aka the “Cetus Assignment Clause”) trump what may have been an earlier obligation by a Stanford University researcher (Mark Holodniy) to assign invention rights to Stanford University (aka the “Stanford University Assignment Obligation”)?