Research exception. Casting about for additional reasons to deny plaintiff any damages for infringement, defendants suggest that they are exempt from liability under a common law research exception for their use of the ‘822 culture media. Defendants do little to flesh out their suggestion, other than to assert that a jury should be permitted to decide “whether science — and mankind — benefits when researchers like Xx. Xxxxx (and Dr. First) use otherwise patented technology as controls or otherwise in their university-based research laboratories. A jury should decide whether a remote promise of some commercial success should override the benefits of such university-based research.” Defs’ Br. in Opp. to Infigen’s Br. for Partial Summ. Judgm., dkt. #145, at 6. The assertion is hardly persuasive. In the first place, it is up to Congress to decide whether there should be an infringement exemption for university-based research laboratories. So far, Congress has not seen fit to grant one. See, e.g., Patent Competitiveness and Technological Innovation Act of 1990, H.R. 5598, 101st Cong. (1990), which was never passed but which, among other things, proposed exemptions from infringement liability for university research. Second, Xx. Xxxxx is being sued for work done in a commercial laboratory, not for work done in a university research setting. There is a common law experimental exception to infringement, but its scope has never been explored in detail. Generally, it seems to be what Justice Story described it as in Xxxxxxxxxx v. Cutter, 29 Fed. Cas. 1120, 1121 (C.C.D. Mass. 1813): an exemption from punishment for building “a machine merely for philosophical experiments, or for the purpose of ascertaining the sufficiency of the machine to produce its described effects.” See, e.g., Roche Products x. Xxxxx Pharmaceutical Co., 733 F.2d 858, 862-63 (Fed. Cir. 1984) (finding experimental use exception to be “truly narrow” and refusing to expand it to cover use of patented drug for federally mandated premarketing tests prior to enactment of § 271 (e)(1)). It is undisputed that defendants used plaintiff’s patented activation methods and culture media in their cloning experiments and that the purpose of those experiments was to develop transgenic cattle that could be used for commercial purposes, including the production of transgene products. These were not “philosophical” experiments or experiments carried out merely to satisfy the curiosity of researchers; they were done as part of the ongo...
Research exception. Notwithstanding the restrictions set forth in Section 5.7.1 (Exclusivity Obligations), [***] and its Affiliates may conduct non-clinical or pre-clinical research regarding Exosome therapeutic products directed to a Research Target or a Replacement Target, provided that, in each case, [***] will provide written notice [***] if [***] or its Affiliates commence any such non-clinical or pre-clinical research outside of the activities conducted by [***] under this Agreement and will provide [***] with Additional Research Reports, in each case, as set forth in Section 2.12 (Additional Research) with respect to such activities. [***] may engage Third Party academic institutions (but not for-profit or other commercial Persons) or Third Party contract research organizations to conduct such non-clinical or pre-clinical research regarding Exosome therapeutic products directed to a Research Target or a Replacement Target. For avoidance of doubt, in connection with any non-clinical or pre-clinical research activities permitted under this Section 5.7.2 (Research Exception), [***].
