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
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
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.