Inventor Disputes DNA Sequencer Patent

syntap writes: "USA Today is reporting on a story on an argument between a research company and the California Institute of Technology over who 'owns' a particular DNA sequencing technology, and they want it placed in the public domain. 'The suit also claims that millions of federal dollars were used to create the device, which would give researchers backed by the government the rights to buy and use the sequencer without paying royalties. It demands that Caltech and Applera refund millions of dollars to federal agencies for royalties they paid on sequencers used in public research.'"

some comments

[nucal]

For what it's worth: Henry Huang [wustl.edu] looks like he has a pretty impressive CV. He worked with Lee Hood from 1977-1982, a time period where Hood was making the transition from being a molecular immunologist to more of a DNA sequencing technologist. So the timing was right for him to have made a significant contribution to the DNA sequencing method. Pretty bad move to leave him off the patent if he did make a contribution.

MJ Research [mjr.com], who filed the lawsuit, is a manufacturer of "affordable" lab equipment - including thermocyclers [mjr.com] for PCR amplificaton of DNA - which might have been a previous patent issue for them (since they don't explicitly mention PCR in the description). Judging from their product line, they'd like to crack the sequencing market [basestation.com]. As an aside, they have offices "all over the world", including Lake Tahoe (Incline Village, NV) [mjr.com] - I wonder if that's a condo?

sounds like he has a case

[NaturePhotog]

Huang says that he started with absorptive dyes because the chemistry was easier, but that he also considered the possibility of needing fluorescents -- an idea documented in his notebooks -- because they were known to be more sensitive.
...
The disclosure, signed by Smith and the Hunkapiller brothers, says they conceived the sequencer idea on Oct. 1, 1982 -- just five weeks after Huang departed.

So, the idea of using dyes (instead of radioactivity) was his. He also came up with the idea of using fluorescent dyes because of their increased sensitivity. He also came up with the idea of running the fragments through a single 'lane' of tubing to isolate them. And using an optical scanner to identify them. And using a computer to decode the results.

Sounds to me like he had an awful lot to do with it. Whether or not that means the other part of the article (that the government should get them royalty-free) isn't as clear, but it sounds to me like Henry Huang was certainly an inventor of the process.

Re:sounds like he has a case

[j09824]

So, the idea of using dyes (instead of radioactivity) was his.

Dyes have been used for tagging in biology for a long time, so the idea isn't quite as novel as it may seem at first sight.

not metioned in the article...

[Anonymous Coward]

Every single person who works (in any capacity, mind you) at Caltech (a.k.a. the Institute) signs a piece of paper that makes any hardware you patent or software you write, using Intitute funds or facilities, intellectual property of the Institute. I believe you can be the patent holder or author but the Institute gets the royalties or whatever.

This has been upheld in court, ad nauseum.

Another sysadmin I know has written a useful program, that he cannot release under GPL for fear of the legal brigade.

Re:not metioned in the article...

[Anonymous Coward]

Thats pretty standard for any employment contract. If you do something on their time or with their equipment, it belongs to them. It sucks, but it's fair. Now, if you are careful to only do it on your own time and with your own equipment, then it's yours. I know a prof at Michigan who runs a business on the side that's related to his research area, but he keeps things completely separate, so the U can't touch it.

Basically, if he wrote the program as a part of his job, it's not his to give away, it's the university's. There may be someone who would see the reasonableness of GPLing it and let that be done, but he'd have to find someone with the power to do that.

The government getting ripped off.

[doricee]

I find it kind of funny that a key argument here is about the gov. being ripped off by researchers. I work at the Hood lab as a student. I've noticed that the researchers were rather concerned by the University of Washington's poor handling of Intellectual property. (one of the reasons they left to form a private non-profit) I've heard of many small examples but the best one is that of one researcher who developed a cell line that the UW sold the rights to a company for dirt cheap and didnt reserve any rights for itself to continue to work on it. So that reseacher is working illegally on something that he developed. I'd guess similar things happen a lot of other public research centers. Maybe public research centers need better IP lawyers?

previously disclosed?

[j09824]

The patent was filed in 1990 and issued in 1992 (number 5,171,534). According to the article, the invention was made in 1982, and Hood's lab was showing the devices and describing the process to visitors in the mid-to-late 1980's. That makes me wonder whether the patent is even valid: if you disclose your invention before filing, the patent is generally not valid.