The University has asked the United States Supreme Court to review a federal appeals court decision on a patent-infringement lawsuit filed by the former director of Duke's Free Electron Laser Laboratory.
If the high court takes up the case, its decision could be a landmark in patent law, especially in relation to universities and patent-holding researchers.
The suit alleges that Duke infringed upon two of plaintiff John Madey's patents by operating the FEL and using equipment related to Madey's patents after he was fired as director of the laboratory in 1997.
The U.S. Court of Appeals sent the case back to a North Carolina district court in October, directing the lower court to reexamine the case using a more limited interpretation of the experimental-use exception--a doctrine that allows for patent infringement if relevant research is used, in the words of a previous court decision, "for amusement, to satisfy idle curiosity or for strictly philosophical inquiry."
What is unclear, however, is whether academic research with no commercial applications falls under this definition.
When the case first went to district court in 2001, the University won, arguing that its use of Madey's equipment fell under the experimental-use exception and was exempt from patent laws because the research was conducted under a government research grant.
Madey appealed, arguing that since the University "is in the business of obtaining grants and developing possible commercial applications for the fruits of its academic research," it should not be exempted.
In remanding the case, the appeals court agreed with Madey that the district court incorrectly shifted to him the burden to prove Duke's use of the equipment did not fall under the experimental-use exception when it was the University's responsibility to show that its use fell under the doctrine.
Since the October ruling, the case has received considerable national attention. The Association of American Medical Colleges has strongly backed Duke, arguing that new rules and procedures would disrupt academic research. But some patent lawyers counter that universities should follow patent laws when dealing with their researchers, especially if the schools are profiting financially.
Now, the University would like the nation's highest court to consider the case and set a national standard.
"My major concern is that scientific creativity would be stifled if investigators are required to conduct patent searches every time they launch a new line of experimentation," School of Medicine Dean Sandy Williams said in a statement.
Madey, however, remained confident that the University should not be allowed to use his equipment and a procedure still used to operate the laser, both of which are patented.
"I am a bit surprised that the legal basis for the suit has been questioned," Madey wrote in an e-mail from the University of Hawaii-Manua, where he currently runs another free electron laboratory.
"The right of United States citizens to receive patents to protect their intellectual property is guaranteed in the United States Constitution, and I find it hard to understand why Duke's administration and lawyers believe that this provision of the Constitution should not apply to Duke," he said.
Madey brought the free-electron laser with him to Duke from Stanford University in 1988. The device uses moving electrons to produce beams of extremely high radiation that can be tuned precisely for different tasks. Currently, University scientists use the laser to try to improve brain surgery and study infrared photo chemistry, among other research.
The Associated Press contributed to this story.
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