Purdue University wins patent infringement lawsuit against STMicroelectronics

U.S. patent 7,498,633 covers groundbreaking technology involving silicon carbide semiconductors invented by Purdue’s James Cooper and his graduate student/postdoctoral researcher Asmita Saha. On Dec. 4, a jury returned a verdict in Purdue’s favor, finding that ST infringed the patent by selling infringing silicon carbide semiconductors. The jury awarded Purdue $32.5 million in past compensatory damages, plus a running royalty on future sales.

“Winning this case is a great victory for Purdue,” said Brian Edelman, Purdue Research Foundation (PRF) president. “As the university’s tech transfer and commercialization arm, we take managing and protecting Purdue intellectual property very seriously, and we hold ourselves and others accountable to the highest standards. Our preference is to reach a licensing agreement, but we have a moral obligation to protect Purdue IP, and that includes going to court to defend our rights. The jury recognized this semiconductor research from Purdue researchers, and the decision is great news for the inventors, Purdue University and Purdue Research Foundation.”

”Purdue University is a top 4 patent-generating university in America. As a public land-grant institution, we support inventors and entrepreneurs to translate research to societal impact,” said Purdue President Mung Chiang. “Through programs such as Purdue Innovates, we mentor students and faculty, foster a culture of discovery, license their world-changing technologies to market and protect their intellectual property rights as needed.”

“Purdue and its people deserve the benefit of the innovation for which our university is known worldwide,” said Mitch Daniels, Purdue Research Foundation board chairman. “Our work to protect that innovation against unfair exploitation has now been vindicated. We will continue to stand by our research and the great work being done at Purdue.”

As a land-grant university, Purdue University has the fiduciary and moral responsibility to protect inventions made by students and faculty. Purdue Research Foundation manages the Purdue Innovates Office of Technology Commercialization (OTC), which operates the technology transfer process. OTC vets invention disclosures from university personnel, applies for patents and other intellectual property protections, and licenses innovations to established and startup companies worldwide. In the 2022 calendar year, PRF secured 192 patents from the U.S. Patent and Trademark Office, placing Purdue fourth among all U.S. universities.

“Purdue Research Foundation has seen the worldwide impact of research created at Purdue University’s campuses, colleges and schools,” said Brooke Beier, Purdue Innovates senior vice president. “We are pleased to be partners in licensing this government-funded intellectual property to industry, so it reaches the public and impacts people’s lives.”

Under the Bayh-Dole Act, contractors of inventions arising from federal government-funded research, such as U.S. universities, own, patent and commercialize inventions through licensing. At Purdue, revenues from licensing are distributed among the inventors, their affiliated departments and the Purdue Research Foundation, which reinvests back into the commercialization and innovation ecosystem.

“This case is representative of the diligent efforts PRF has made to protect Purdue innovations from unauthorized use,” said Ken Waite, Purdue Innovates Office of Technology Commercialization chief patent counsel and director of intellectual property. “Because of the impact on the public and Purdue University, PRF understands the importance of investing in the process to protect Purdue intellectual property.”

About Purdue Innovates Office of Technology Commercialization

The Purdue Innovates Office of Technology Commercialization operates one of the most comprehensive technology transfer programs among leading research universities in the U.S. Services provided by this office support the economic development initiatives of Purdue University and benefit the university’s academic activities through commercializing, licensing and protecting Purdue intellectual property. In fiscal year 2023, the office reported 150 deals finalized with 203 technologies signed, 400 disclosures received and 218 issued U.S. patents. The office is managed by the Purdue Research Foundation, which received the 2019 Innovation and Economic Prosperity Universities Award for Place from the Association of Public and Land-grant Universities. In 2020, IPWatchdog Institute ranked Purdue third nationally in startup creation and in the top 20 for patents. The Purdue Research Foundation is a private, nonprofit foundation created to advance the mission of Purdue University. Contact otcip@prf.org for more information.