## Facts

- John M. J. Madey, a physicist, owned two patents covering technology practiced by free-electron laser (FEL) equipment used in his laboratory.
- Duke University recruited Madey to its physics department; he moved his FEL laboratory to Duke, which built facilities to house the equipment.
- Madey directed the FEL lab for years; after a dispute, Duke removed him as lab director.
- Madey resigned, but Duke continued operating equipment that allegedly practiced Madey’s patents.
- Madey sued Duke for patent infringement and related claims based on Duke’s continued operation of the equipment.

## Issues

1. Whether the district court improperly shifted to the patentee the burden to negate the experimental use defense and treated the doctrine as part of the infringement analysis.
2. Whether the common-law experimental use defense covers a non-profit university’s research use that advances institutional objectives such as education, grant funding, and reputation.
3. Whether Duke could be liable for alleged infringement involving equipment that a third party owned and controlled.

## Decision

- The Federal Circuit reversed in part, affirmed in part, and remanded.
- The court held the experimental use defense is extremely narrow and did not bar infringement liability for Duke’s research uses that furthered Duke’s institutional objectives.
- The court held the party invoking the experimental use defense bears the burden of production and persuasion; the district court erred by effectively placing that burden on Madey.
- The court affirmed summary judgment for Duke as to alleged infringement tied to equipment Duke did not own or control, concluding Duke did not “use” the invention for direct infringement purposes in that setting.

## Legal Principles

- The common-law experimental use defense is limited to use “solely for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry.”
- The defense does not apply where the accused use is in furtherance of the accused infringer’s “legitimate business,” even if the entity is non-profit.
- A university’s legitimate business objectives include educating students, enhancing institutional reputation, and supporting research programs that attract grants and recognition.
- The experimental use doctrine is analyzed as a narrow exception after infringement is otherwise shown, not as part of the threshold infringement inquiry.
- The accused infringer bears the burden to establish the experimental use defense.
- Direct infringement by “use” depends on the accused party’s relevant ownership or operational control; where a third party owns and controls the apparatus, the accused party may not be the direct infringer.

## Conclusion

The Federal Circuit held that routine university research conducted to advance institutional objectives falls outside the experimental use defense, placing the burden on the accused infringer to prove the exception and affirming that lack of ownership or control can defeat direct “use” infringement for certain alleged acts.


Madey v. Duke Univ., 307 F.3d 1351 (Fed. Cir. 2002)