## Facts

- Trinity Industries, Inc. and the Texas A&M University System (TAMU) worked together to develop and patent technology for treating highway guardrail ends.
- The research received financial support through the Texas Department of Highways and Public Transportation (later TxDOT), which in turn received federal transportation funds from the United States Department of Transportation.
- Trinity and TAMU obtained patents covering the guardrail-end technology and later sued Road Systems, Inc. for patent infringement.
- Road Systems asserted that the patents were invalid (or could not be enforced) because Trinity and TAMU allegedly failed to disclose in their patent application that the work was federally funded.
- Road Systems relied on the Bayh-Dole Act of 1980, which requires disclosure of certain federal funding agreements for inventions made with federal support.
- Trinity and TAMU responded that they did not have a “funding agreement” with the federal government within the meaning of Bayh-Dole; and even if Bayh-Dole applied, any nondisclosure was not material to patentability and did not create an infringement defense for a private accused infringer.
- Road Systems moved for summary judgment based on its Bayh-Dole nondisclosure theory.

## Issues

1. Whether an accused infringer is entitled to summary judgment that a patent is invalid or unenforceable because the patentees allegedly failed to disclose federal funding under the Bayh-Dole Act.
2. Whether the summary-judgment record established, as a matter of law, that Bayh-Dole applied through a federal “funding agreement” and that any nondisclosure affected the patentees’ ability to enforce the patents against Road Systems.

## Decision

- The court denied Road Systems’ motion for summary judgment.
- The court declined to hold, on the summary-judgment record, that the asserted patents were invalid or unenforceable based on the alleged Bayh-Dole nondisclosure.

## Legal Principles

- Summary judgment is appropriate only when there is no genuine dispute of material fact and the movant is entitled to judgment as a matter of law; the court draws reasonable inferences in favor of the nonmovant.
- The Bayh-Dole Act addresses rights and obligations tied to inventions developed with federal support, including disclosure obligations to the federal agency connected to the funding.
- A failure to comply with Bayh-Dole’s disclosure and related requirements does not automatically render a patent invalid as to the public at large; the statute’s enforcement mechanisms focus on the government’s rights in the invention rather than creating a general invalidity defense for private parties.
- Where the applicability of Bayh-Dole (including whether there is a qualifying federal “funding agreement”) and the legal effect of any nondisclosure are disputed, summary judgment declaring the patent invalid or unenforceable is not warranted.

## Conclusion

The court refused to grant Road Systems summary judgment based on the claim that Trinity and TAMU’s patents could not be enforced due to an alleged failure to disclose federal funding under the Bayh-Dole Act, leaving the Bayh-Dole-based defense unresolved on that record and preventing judgment as a matter of law against the patents.


Trinity Industries, Inc. v. Road Systems, Inc., 235 F. Supp. 2d 536 (2002)