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Professor Ted Hagelin, founder and Director of the Technology Commercialization Law Program at Syracuse University College of Law; Director of the New York State Science and Technology Law Center; Crandall Melvin Professor of Law; and Kauffman Professor of Entrepreneurship and Innovation, passed away Saturday, May 18, 2013.

Professor Hagelin was an expert in technology innovation law with a passion for sharing that expertise with others. He graduated from the Wharton School at the University of Pennsylvania and obtained his J.D. from Temple University Law School. He earned an LL.M. degree from Harvard University and practiced corporate/commercial law with Dechert, Price and Rhodes (now Dechert) in Philadelphia.

He began teaching at the University of Cincinnati Law School before joining the Syracuse College of Law faculty in 1978. In 1990, he founded the Law, Technology, and Management certificate program (now Technology Commercialization Law Program) to integrate the study of intellectual property and business law with an understanding of markets, financing and technology. He believed strongly that lawyers needed a broad understanding to effectively participate in furthering technology invention and innovation.

In an interview last fall with WRVO’s Ryan Delaney, Professor Hagelin explained, “The reality is today, that business people don’t like lawyers because they’re always messing the deal, scientists and engineers don’t like lawyers,” he said. “We’re really trying to develop a new generation of lawyers that add value to the technology commercialization process, don’t subtract from that process.”

Professor Hagelin founded and directed a summer law program in Hong Kong, Technology Transfers in China, from 1995 to 1998. This unique program was hosted by City University of Hong Kong and focused on Chinese intellectual property, licensing and business law. Designed for Syracuse University College of Law Students, the program included classes at City University and on-site briefings at law firms, companies and government offices in Hong Kong as well as trips to China’s Special Economic Zones.

In 2004, the Syracuse University College of Law was selected as the New York State Science and Technology Law Center in a peer reviewed competition with Professor Hagelin serving as Director. He supervised over 120 research projects on the commercial development of early-stage technologies that originated in universities, federal research laboratories, technology development organizations, and large, medium, small and start-up companies across the state. He also researched and authored reports on various intellectual property policies as well as model licensing and negotiation policies for New York State. 

The Task Force on Diversifying the New York State Economy through Industry-Higher Education Partnerships, established under Governor David Paterson, cited and highlighted the work Professor Hagelin was doing at the Center in their December 2009 Final Report. They recommended that his established model of academic credit-for-service be adopted by other colleges and universities to facilitate the growth of New York State’s economy.

Professor Hagelin was a member of the New York State Bar, the Pennsylvania State Bar, the Licensing Executive Society, the American Intellectual Property Law Association and the Association of University Technology Managers. He authored multiple law review articles on technology commercialization and intellectual property issues including: The Unintended Consequences of Stanford v. Roche, 39 AIPLA Q.J. 335 (2011); The Experimental Use Exemption to Patent Infringement: Information on Ice, Competition on Hold, 58 Fla. L. Rev. 483 (2006); Valuation of Patent Licenses, 12 Tex. Intell. Prop. L. J. 423 (2004) (cited in Uniloc v. Microsoft, 632 F.3d 1292, 1313 (Fed. Cir. 2011); Competitive Advantage Valuation of Intellectual Property Assets: A New Tool for IP Managers, 44 IDEA 79 (2003); A New Method to Value Intellectual Property, 30 AIPLA Q.J. 353 (2002) reprinted in 35 Intell. Prop. L. Rev. 601 (2003); Valuation of Intellectual Property Assets: An Overview, 52 Syracuse L. Rev. 1133 (2002) reprinted in Richard S. Gruner Et al., Intellectual Property in Business Organizations: Cases and Materials 25 (2006). In March of 2012, he was ranked in the Top 3% of authors with Social Science Research Network (SSRN) downloads. He organized multiple conferences and presented at even more.

Professor Hagelin held two patents of his own on methods for valuing intellectual property. In addition, he recently published a casebook, Technology Innovation Law and Practice (LexisNexis, 2012).

Above all else, Ted Hagelin was a very devoted teacher. He was extremely proud of his students and enjoyed following their success after graduation. He contributed immensely to the field of technology commercialization and intellectual property law. He was a thoughtful and supportive colleague whose presence will be missed just as sorely as his knowledge and insight. The SU College of Law has set up a memory page for Professor Hagelin that can be found here.

Supreme Court Case involving: pharmaceuticals, FDA regulation, medical industry

Background: In 2004, a New Hampshire woman, Karen Bartlett, took Mutual Pharmaceutical Co.’s generic non-steroidal anti-inflammatory drug, sulindac. Bartlett suffered a known, but rare, skin hypersensitivity reaction. It was extremely severe and ultimately left here severely disfigured as two-thirds of her body was covered in burn-like lesions and even after 12 eye surgeries she is nearly blind.

At the time she was prescribed the drug, its label did not contain any specific warning about the serious skin reaction. Later the FDA required this warning be on the drug label. Bartlett sued the drug company under New Hampshire state law for “failure-to-warn” and “design-defect “claims. The District Court dismissed the “failure-to-warn” claim after Bartlett’s physician admitted he hadn’t read either the label or an FDA required package insert that warned about the risk of that potential side effect. She was able to go forward with the “design-defect” claim, the New Hampshire law that “requires manufacturers to ensure that the products they design, manufacture, and sell are not ‘unreasonably dangerous.’” She was awarded $21 million dollars.

Opinion Summary: In a five to four decision, the Court overturned the award and held that Mutual Pharmaceutical Co. was not liable. The majority found that the New Hampshire law imposes a duty on drug manufacturers to “ensure that the drugs they market are not unreasonably unsafe, and a drug’s safety is evaluated by reference to both its chemical properties and the adequacy of its warnings.” 

Obviously, Mutual couldn’t change the composition of sulindac as it was based on the name-brand drug that had been approved by the FDA. Likewise, federal law prohibits generic drug manufacturers from independently changing drugs’ labels. New Hampshire law was effectively requiring Mutual to violate federal law and the majority maintained that in such a case federal law wins.

For further review.

Implications: Generic manufacturers are given much less of a burden with this ruling. They have to make and sell the same product with the same label as the original drug approved by the FDA. Anyone injured by the drug cannot sue generic drug manufacturers on the ground that the drug is unreasonably dangerous.

Supreme Court Case involving: patents, licensing, malpractice

Background: Vernon Minton developed a computer program intended to make securities trading easier, known as TEXCEN, and then leased the system to a securities brokerage in 1995. In 2000, he obtained a patent for his invention and then, represented by Jerry Gunn, he filed a patent-infringement lawsuit against NASDAQ and others.

NASDAQ moved for and was granted summary judgment. The “on sale” bar in patent law (35 U.S.C. Section 102(b)) states that an inventor is barred from obtaining a patent if there is a sale of the invention more than one year before the date of the patent application. Minton tried to argue that his lease fell within the “experimental use” exception to the on-sale bar. However, the court waived the argument holding that he had failed to raise the experimental-use exception earlier.

Minton sued his attorney, Jerry Gunn, for malpractice in Texas state court. He alleged that his loss of the patent-infringement lawsuit and the invalidation of his patent were Gunn’s fault as he’d failed to timely raise the experimental-use argument. Gunn moved for and was granted summary judgment by the Texas state court. He was able to demonstrate that the lease of the system was not for an experimental use and so the experimental-use argument would have failed even if timely raised.

Minton appealed the summary judgment with a new argument, the state court didn’t have jurisdiction over his case because the malpractice suit involved federal patent law and thus needed to be tried in federal court. A divided Texas Supreme Court agreed with Minton.

Opinion Summary: The court unanimously agreed to reverse the Texas Supreme Court’s ruling and held that the original summary judgment in favor of Gunn should stand. The opinion stressed that the malpractice judgment had no effect on the validity or interpretation of the actual patent thus didn’t actually affect federal patent law. Justice Roberts explained, “There is no doubt that resolution of a patent issue in the context of a state legal malpractice action can be vitally important to the particular parties in that case. But something more, demonstrating that the question is significant to the federal system as a whole, is needed. That is missing here.”

For further review.

Implications: The ruling enforces a tradition of state regulation of attorney competence even regarding matters related to patent law. States generally are the defining authority on the standards for qualifications and misconduct by attorneys.

Supreme Court Case involving: copyright, importing/exporting, publishing industry

Background: Supap Kirtsaeng came from Thailand to the United States in 1997 to study at Cornell and later at the University of Southern California. While in the United States, Kirtsaeng had friends and family in Thailand buy copies of textbooks, where they were sold at a lower price, and then ship them to him in the United States. These imported textbooks were then sold on eBay for a profit. Eight of the textbooks sold where printed in Asia by the publishing company, John Wiley & Sons, Inc.

John Wiley & Sons, Inc. sued Kirtsaeng for copyright infringement. A portion of the Copyright Act (Section 602(a)(1)) states that it is illegal to import a work “without the authority of the owner.” Kirtsaeng argued that under a different section of the Copyright Act (Section 109(a)), known as first-sale doctrine, legally obtained copyrighted material may be sold without the copyright owner’s permission. The district court rejected Kirtsaeng’s arugment and the United State Court of Appeals for the Second Circuit held that first-sale doctrine only applied to works made in the United States.

Opinion Summary: In a six to three opinion, the majority reversed the early ruling in favor of Kirtsaeng. In the opinion Justice Breyer took a different view of the argument made by the lower courts, which he characterized as “geographical.” He focused on the question of whether the manufacturing of the copies, regardless of location outside the United States, complied with the requirements of U.S. law.

As the publisher (John Wiley & Sons) had authorized the making of the copies, they were “lawfully made under this title,” allowing first-sale doctrine to apply.

For further review.

Implications: Regardless of what country a book is purchased in, if it is lawfully obtained, it can be resold without permission from the publisher.