Florida State U. Loses Patent Claim for 3 New Compounds

By FLORENCE OLSEN
The Chronicle of Higher Education
7/11/03

Florida State University has lost the latest round in a court fight to claim patent rights for three chemical compounds that might be useful for treating cancer.

The university and three of its scientists -- Robert Holton, Hossain Nadizadeh, and Li-Xi Yang -- lost their claim to be named as co-inventors of the compounds late last month when a three-judge panel of the U.S. Court of Appeals for the Federal Circuit overturned a lower-court ruling. The earlier ruling had favored the university on the basis that the new compounds were synthesized using a chemical process that Florida State owns as a trade secret (The Chronicle, November 30, 2001).

The appeals court ruled against the university in deciding that three other scientists -- Chunlin Tao, Patrick Soon-Shiong, and Neil Desai, who work for American Bioscience Inc., in California -- were the true inventors of the taxane compounds, which the scientists believe might help patients respond better to radiation therapy.

Mr. Tao had worked at the university for Mr. Holton as a research assistant from July 1992 to November 1994. The university maintained that Mr. Tao's patent claims were based on the use of a chemical process that he had learned while working at the university. Mr. Holton is noted for his discovery of a chemical process that was used to create a form of the anti-cancer drug Taxol.

American Bioscience, a generic-drug manufacturer, had already paid the university $300,000 in damages to settle the charges that Mr. Tao had misappropriated trade secrets in the case involving the new compounds.

According to reports by the Associated Press and the news journal The Scientist, royalties from Taxol have earned Florida State more than $300-million since the mid-1990s. But with those royalties in decline, in part because of less expensive alternatives now on the market in Canada, the university was counting on the potentially valuable new compounds to keep the dollars flowing (The Chronicle, February 7, 2003).

The university plans to ask for a rehearing before the appellate court, but its lawyer said it is unlikely to appeal to the U.S. Supreme Court if it loses again.