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

MEMORANDUM & ORDER

Re: Defendants’ Motion to Compel

On October 14, 2005, plaintiff The Board of Trustees of the Leland Stanford Junior University (“Stanford”) filed a complaint alleging patent infringement (the “Complaint”) by defendants Roche Molecular Systems, Inc., Roche Diagnostics Corporation, Roche Diagnostic Operations, Inc., and Roche Diagnostic Systems, Inc. (collectively the “Roche defendants”). On November 17, 2005, defendants filed an answer and counterclaim against plaintiff and counterclaim defendant Thomas Merigan (the “Counterclaim”), denying infringement and further alleging that the patents in question are not duly and lawfully issued to the plaintiff. Now before the court is the issue of whether Stanford waived its attorney-client privilege and work product protection as to the subject of inventorship of United States Patent Application No. 07/883,-327 (the '327 Application and patents and applications claiming priority from the '327 Application.

Having considered the parties’ arguments and submissions, and for the reasons set forth below, the court enters the following memorandum and order.

BACKGROUND 1

The instant motion concerns an incident that occurred…