Madey v. Duke University
307 F.3d 1351 (Fed. Cir. 2002)

  • Madey was a researcher at Duke where he experimented with lasers.
    • Madey had obtained several patents prior to coming to Duke, and continued to experiment with his inventions while working there.
  • Duke fired Madey, but kept using his equipment, including equipment that Madey had patents on. He sued for infringement.
    • Duke argued that the equipment was only being used for experiments, and so was exempt from infringement claims via the doctrine of experimental use.
  • The Trial Court found for Duke in summary judgment. Madey appealed.
    • The Trial Court found that the experimental use defense precluded a finding of infringement.
    • The Court looked to Roche Products, Inc. v. Bolar Pharmaceutical Col., Inc. (733 F.2d 858 (Fed. Cir. 1984)) and found that for Madey to win, he would have to establish that Duke was using the patent for "definite, cognizable, and not insubstantial commercial purposes."
      • The Court found that since Duke was a non-profit university and not a business, they must not have a commercial purpose.
  • The Appellate Court reversed and remanded.
    • The Appellate Court found that the experimental use defense had an intent element. And so it can't be decided on summary judgment. The court has to inquire as to what Duke intended to do with the knowledge gained from their experiments.
    • The Court found that experimental use is an affirmative defense. That means that Duke has to present evidence that the use was experimental, and then Madey would have to rebut that evidence.
      • So the initial burden of proof isn't on Madey.
    • The Court found that Duke's non-profit status was not relevant. The court needs to look at the specific use and what specific gains Duke intended to receive from that use. Even non-profits can make a lot of money through selling the results of their research.
      • Plus research opportunities bring in students and that brings in tuition money and research grants.
  • This case really narrowed the experimental use defense. It is now only really useable by amateur hobbyists.