Dispute over rights to Retin-A continues

University lawyers reaffirmed their position that the University should control the patent for Retin-A, as a U.S. District Court battle over the wrinkle-control medicine continued Tuesday. The University filed suit against University Dermatology Professor Emeritus Albert Kligman and Johnson and Johnson Baby Products Company in January 1990, asserting control of Retin-A's patent and a share of its royalties. Retin-A has been heralded as a "miracle drug" due to its skin healing properties, and has the potential to earn untold millions of dollars for whomever holds its patent rights. Currently, the Food and Drug administration has not approved Retin-A for over-the-counter sales, but it may be prescribed by physicians and is available outside the United States. The University's attorneys have maintained throughout the case that the University controls all patent rights to inventions by professors working for it, according to its University's patent policy. The University alleges that Kligman violated this policy when he sold the patents to the drug in 1986 to Ortho Pharmaceuticals Corporation, a division of Johnson and Johnson. Tuesday's hearing was prompted when lawyers for Kligman and the company filed a motion to dismiss the University's case. U.S. District Court Judge Jay Waldman listened to arguments from both sides for two hours Tuesday. But lawyers for both sides were unwilling to predict when Waldman would give a ruling on the motion, but all said it could take many months. The University's case against Kligman and Johnson and Johnson has been marked by bitter and complex disputes over both factual and legal issues, and this week's hearing continued the trend. Ellen Martin, an attorney representing Kligman and Johnson and Johnson, argued for 45 minutes Tuesday that an inventor has the rights to the fruits of his invention unless he has signed a contract with his employer giving the employer those rights. Another attorney for Kligman and Johnson and Johnson, Thomas Morrison, said that "the University cannot overcome the problem that they only have a patent policy in its files [and not a signed contract.]" The University, represented by Gerson Zwiefach, argued Tuesday that Kligman knew about the University's patent policy. Because he knew he was bound by it, the patent is owned by the University, Zwiefach added. Judge Waldman's line of questioning for both sets of attorneys stressed the issue of whether Kligman received anything from the University in exchange for the patent rights. The University's attorney, Zwiefach, said Kligman did receive "consideration" from the University, citing a salary increase, use of University research facilities and the help of other University faculty solely for his research. Associate General Counsel for the University Neil Hamburg said yesterday that in exchange for giving Kligman the University's resources, Kligman's contribution was to disclose new discoveries. Hamburg said Kligman admitted this himself last year in sworn depositions for the case. Johnson and Johnson's lawyer, Morrison, also argued before Waldman that the University's suit should be dismissed because the statute of limitations expired since the University first learned of Kligman's invention. The limit for asserting control over the patent is normally six years. Kligman's lawyers maintain the University knew of his discovery in 1971. But Hamburg said Kligman did not patent the latest version of Retin-A until 1986. This latest version is the one that is most marketable, Hamburg said. The actual jury trial for the University's case will not take place for an indefinite amount of time, attorneys said. Hamburg said yesterday that the University will appeal if the case is dismissed by Waldman, and Morrison said he will probably file another set of motions to dismiss the suit if the judge decides against his clients. It is unknown exactly how much money Johnson and Johnson has made from the sale of Retin-A, but a 60 Minutes report which aired last year said that Johnson and Johnson made over $100 million before February 1990.

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