A patent case involving the University of Pittsburgh and the University of California-Los Angeles (UCLA) holds some frightening lessons for TTOs on the importance of drafting clearly defined agreements covering what happens when joint research with other universities turns into commercially viable IP. Last month, the U.S. District Court for the Central District of California ruled after a three-year legal battle that only a pair of researchers from Pitt were inventors on a patent that had originally included four co-inventors from the University of California-Los Angeles (UCLA). The patent relates to stem cells isolated from adipose tissue, which in vivo tests have shown can differentiate into many different tissue types. These properties make the cells potentially useful for a wide variety of medical applications, particularly for cosmetic applications, soft-tissue and organ regeneration, and drug screening. Pitt and UCLA had each signed separate exclusive licensing deals for the patented technology — with Sunnyvale, CA-based Artecel and San Diego-based Cytori Therapeutics, respectively. When the court ruled June 9 that Pitt researchers were the sole and rightful inventors, UCLA and Cytori lost all patent rights.

With the inventorship issue settled, the dispute may now shift to how broadly the patent protection extends. Cytori says the court’s decision on the so-called “231″ patent does not impact its primary ongoing business because its products do not rely on the 231 patent. The company claims that its flagship product, the Celution System, processes adipose tissue to obtain “a diverse and mixed population of cells,” whereas the 231 patent “covers a narrowly defined population of adipose-derived adult stem cells in an environment substantially free of other cellular materials found in adipose tissue.” But according to Linda Powers, chair of Artecel’s board of directors, that distinction may become another matter for the courts to decide. She says Cytori’s definition is much narrower than her company’s interpretation and does not reflect the patent’s scope. “Any stem cell that you work with has been taken out of the tissue that it came from,” Powers noted. She hinted that an infringement suit may be in the offing, stating, “anybody … that makes use of the stem cells that are taken out of adipose tissue is affected by this decision.” Go to: GenomeWeb

Write a comment