Madey v. Duke University case brief

Madey v. Duke University case brief summary
307 F.3d 1351 (2002)

CASE SYNOPSIS

Plaintiff patent holder sued defendant university in the United States District Court for the Middle District of North Carolina for, inter alia, patent infringement and state law violations. The district court dismissed some claims and granted summary judgment for the university on the remaining claims. The patent holder appealed.

CASE FACTS
The patent holder formerly operated a research lab for the university, and some of the lab equipment incorporated his patented devices. One piece of equipment belonged to a third party. The patent holder claimed that the university improperly continued to use the equipment after he was removed as lab director.


DISCUSSION

• The appellate court found that the district court improperly dismissed claims relating to use of one of the patents in furtherance of a federal grant on the basis that jurisdiction lay in the United States Court of Federal Claims under 28 U.S.C.S. § 1498(a). 
• As between private parties, § 1498(a) was not jurisdictional; also, the district court failed to explain how the grant provided governmental consent to suit or authorized use of the patent. 
• The district court also erred in granting summary judgment based on the experimental use defense. 
• The patent holder was improperly required to establish as part of his initial claim that the university's use was not experimental, and the district court applied the defense too broadly. 
• However, summary judgment was proper with respect to the equipment owned by a third party absent evidence that the university used that equipment.

CONCLUSION
The district court's grant of summary judgment was affirmed as to claims relating to the equipment that belonged to a third party. Summary judgment was otherwise reversed. Dismissal of the claims relating to the research grant also was reversed, and the case was remanded.

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