Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc.

MEMORANDUM & ORDER

Cross-Motions for Summary Judgment

On October 14, 2005 plaintiff Board of Trustees of the Leland Stanford Junior University (“plaintiff’ or “Stanford”) brought this action against Roche Molecular Systems, Inc., Roche Diagnostics Corporation, Roche Diagnostics Operations, Inc., and Roche Diagnostic Systems, Inc. (collectively “defendants,” “counterclaim-ants” or “Roche”) alleging infringement of U.S. Patents Nos. 5,968,730 (“the '730 patent”) and 6,503,705 (“the '705 patent”). On November 17, 2005 Roche filed a counterclaim against Stanford, naming Dr. Thomas Merigan (“Merigan”) as an additional counterclaim defendant. In June 2006, Roche amended its counterclaim without objection to add Dr. Mark Holod-niy (“Holodniy”) as a counterclaim defendant. Although counterclaimants assert fourteen counterclaims, the relevant counterclaims to this motion are Counterclaim Four, for Declaratory Judgment of Ownership of the '730 and '705 patents against Stanford, and Counterclaim Six, for Declaratory Judgment of License to the '730 and '705 patents against Stanford. These counterclaims have also been pled as affirmative defenses. Now before the court are the parties’…