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.
Innovation Review
Mutual Pharmaceutical Co. v. Bartlett
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.
Gunn v. Minton
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.
Kirtsaeng v. John Wiley & Sons, Inc.
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.
Welcome
Welcome to the Spring Issue of the Innovation E-Review.
On April 15th, the New York State Science and Technology Law Center and the New York Academy of Sciences hosted a conference titled: Building Human Capital to Drive New York’s Innovation Economy. Representatives from universities, venture capital funds, government, and industry lead discussions on the best way to develop and maintain a professional base with the skills necessary to meet the demands of innovation as an economic development mechanism.
The conference evolved from the common misperception that investment in research at universities will translate directly to businesses, jobs, and economic development. However, this transformation does not happen without experienced “human capital”, e.g. entrepreneurs, investors, engineers, marketers, prototype builders, financial analysts, and lawyers. These professionals are just as necessary for companies to succeed as the researchers and engineers who develop technologies.
This focus of this issue is on some of the New York State educational programs structured to develop new generations of individuals with the skills to carry on technology commercialization. It looks at investment and how the rigors of a knowledgeable investment firm help insure the success of technology commercialization projects by insuring necessary elements are present. New York State is working to develop regions capable of fostering technology commercialization through a strong network among universities, industry, investors, and commercialization specialists in economic development regions. Two challenges from the conference were: How, as a state, is growth and development best fostered? And how is the network of individuals available and willing to assist in this important endeavor best connected?
We’d like to thank Chris Hayter of The New York Academy of Sciences for supporting the conference, and Ken Adams, CEO of Empire State Development for speaking and supporting the NYS STC along with Ed Reinfurt of NYSTAR.
Many thanks to all the speakers for their excellent contributions: Howard Morgan, ofFirst Round Capital, James Spencer, Director of Rensselaer Polytechnic InstituteEmerging Ventures Ecosystems, Bruce Kingma, Associate Provost for Entrepreneurship and Innovation at Syracuse University, Greg Gdowski, Executive Director of the Center for Medical Technology & Innovation at the University of Rochester, Mary Twiss, Project Consultant for Shipley Center for Innovation atClarkson University, Rajit Manohar, Associate Dean of Cornell NYC Tech, and Keith M. Gottesdiener, CEO, Rhythm Pharmaceuticals, Lilian Wu, Program Executive of Global University Programs for IBM Technology Strategy and Innovation, Brian Model of Stonehenge Growth Capital and UVANY, and Martin Babinec, founder of Upstate Venture Connect.
Audio and images from the conference will be available on the website soon.
As always, please feel free to contact us with any questions or comments at nysstlc@law.syr.edu.
Resource Spotlights: Upstate Connectivity
The development of professionals with appropriate experiences and skills is certainly crucial to a successful innovation economy. Another equally important aspect is creating and utilizing connections. The conference highlighted the importance of investment resources in building these connections. Two resources striving to establish an economy based on innovation in the Upstate New York region are Upstate Venture Association of New York (UVANY) and Upstate Venture Connect.
Upstate Venture Association of New York (UVANY) – A statewide organization that seeks to advance opportunities to deploy private capital across New York by providing education and advocacy as well as hosting events. While nonmembers are welcome to attend events and education opportunities there is a membership structure as well. Membership in the organization is broken into three separate categories:
Regular Members are organizations or individuals who make or manage venture capital or private equity investments with an interest in providing capital to Upstate New York companies.
Associate Members are organizations or individuals who provide services to venture capital and private equity industries such as attorneys, accountants, and consultants as well as economic development and industrial development entities and agencies of local, state, or federal government.
Entrepreneur Members require an application and a fee for a yearlong membership that entails various benefits. Entrepreneur Members are able to post Business Profiles that are viewable exclusively by capital providers that are Regular Members, as well as service providers who are Associate Members. They also receive a discounted rate for all UVANY functions and access to the UVANY Investor Database.
Upstate Venture Connect (UVC) – A nonprofit organization that works to connect entrepreneurs, investors, and venture talent to accelerate Upstate New York’s economy by cultivating innovation-oriented companies. Martin Babinec, an entrepreneur from the area who built a company in Silicon Valley, saw a need in the New York area. He gathered an advisory board of experts throughout the region that found a major problem for early stage companies in the area was connecting with the right capital providers, team members, and members for support. While Upstate New York has a variety of resources, the board found a lack of interconnection between educational and regional entrepreneurial networks.
UVC is working to build that connection for first time entrepreneurs with the resources and experienced entrepreneurs in the area. Their website provides a list of relevant events throughout Upstate New York as well as a job bank. UVC has also gathered an invitation-only group of “Connectors” in the Upstate area called Vconnect. VConnector, a propriety mobile/desktop application, is in development to streamline the process of introducing and referring people through the Vconnect group. It will also allow a view into how connections are being made across the ecosystem.
The New York Academy of Sciences
The New York Academy of Sciences is located directly north of the world trade center site in New York City. It was founded in 1817 and “works to advance scientific knowledge, mobilize science to address major global challenges, and increase the number of scientifically informed individuals in society”. Their website provides a comprehensive overview of what they do:
Scientific Meetings
Frontiers of Science is the Academy’s core program for convening professional scientific conferences and symposia, focusing on cutting-edge topics in the life sciences, physical sciences, and green science and sustainability. Bringing together international experts and partners from academia, industry, government, and beyond, Frontiers of Science provides a neutral forum for participants to exchange information on basic and applied research and on the broader role of science, medicine, and technology in society.
Publications
Since 1823, publishing has been an important element of the Academy’s mission to advance scientific knowledge. Signature publications include the Annals of the New York Academy of Sciences, one of the country’s oldest and most respected scientific periodicals, and Academy eBriefings, innovative online multimedia reports that document many of our Frontiers of Science events. We also cover Academy and member news three times annually in The New York Academy of Sciences Magazine, and offer a variety of multimedia products in our Media Center, including podcasts, videos, and an archive of Academy webinars, live, interactive webcasts of selected events.
Career Development
The Academy supports young scientists through its Science Alliance program, a consortium of universities, teaching hospitals, and independent research facilities committed to advancing the careers of students and postdocs in science, technology, engineering, and math. The Academy organizes events offering career advice and opportunities to network, learn from industry professionals, and interact with young investigators in other institutions and disciplines.
Science for the Public
Science & the City is the public gateway to the New York Academy of Sciences. It hosts events focusing on scientific subjects of general interest, publishes a comprehensive calendar of public science events in New York City, and produces a weekly podcast focusing on science-related activities in the metropolitan area.
Scientists Without BordersSM
Scientists Without Borders aims to mobilize and coordinate science-based activities that improve quality of life in the developing world. The Scientists Without Borders database provides a way for organizations, projects, and individuals with complementary needs and resources to find one another.
The Sackler Institute for Nutrition Science
The Academy has recently established The Sackler Institute for Nutrition Science, dedicated to the advancement of nutrition science research and knowledge, translation of this work into the field, nutrition-inspired product development, and nutrition policy. The Institute will collaborate with the World Health Organization to formulate a prioritized agenda for nutrition science research. It will also house a public-private partnership of academic institutions, non-profit organizations, government bodies, and corporations that will work together to galvanize action on this agenda and implement outcomes in the field.
Awards
The Academy organizes two annual awards to support and promote the achievement of young scientists in the New York area. The Blavatnik Awards for Young Scientists recognize the excellence of our most noteworthy young faculty and postdocs in nearby academic institutions. The Innovation and Industry Awards celebrate great contributions by young scientists in research and development.
Innovation & Economic Development
Science and technology are at the heart of economic development, and the New York Academy of Sciences is uniquely poised to assist partners in and outside of New York to become more competitive. The Academy draws on the expertise of its membership to provide advisory services for state and municipal governments internationally.
Sections
These meeting groups are organized by committees of NYAS members interested in particular areas of research. Each section presents lectures and symposia several times each year. Sections are currently active in Anthropology, Environmental Sciences, History & Philosophy of Science, Psychology, and Science Education.
The Committee on Human Rights of Scientists
Fighting on behalf of the human rights of scientists, physicians, mathematicians, engineers, and educators around the world has been the raison d’être of the Academy’s Committee on the Human Rights of Sciences since it was created in 1978.
The Harbor Project
The New York Academy of Sciences undertook a multi-year study to identify and quantify the flows of specific contaminants into the NY/NJ Harbor from its air and watershed, and to recommend pollution prevention strategies.
Company Profile: First Round Capital
When shopping for funding, a startup company is well served to identify investment firms able to provide resources as well as money to the company. Investors with a team approach among its partners, a network of contacts, and experiences and successes in the technical area, are able to invaluable practical assistance as well as funding to a new company. Investment firms that do this successfully have a competitive advantage over less developed investors. First Round Capital offers another unique advantage.
The keynote speaker at the Building Human Capital to Drive New York’s Innovation Economy was Howard Morgan, Ph.D., a partner at First Round Capital. First Round Capital offers a unique network for its companies to access not only First Round Capital’s team, but also other companies similarly situated. First Round Capital’s website includes a highlight about this competitive advantage: “We’re probably one of the only venture firms with engineers on staff, building new technology to connect our entrepreneurs and wire up our community. That network lets our CEOs ask questions, share content and learn from each other, so better decisions get made faster. Every year brings hundreds of questions and thousands of great answers.” In addition, entrepreneurs have the support of the entire First Round Capital team to provide support on their boards, assist with testing and iterations of products, raising additional capital and providing connections.
In his presentation, Howard Morgan reviewed types of new technology companies, and the “beyond STEM” skills these companies need from their professionals. He spoke about the importance of developing the ability to use knowledge as well as the knowledge, the importance of being able to work in groups or teams, to self-educate, and stay open to change. This is the “beyond-STEM” human capital necessary to transform New York’s research investment into successful companies that contribute to New York’s economic success.
Howard Morgan, Ph.D. is a partner with First Round Capital, a venture capital firm with offices in San Francisco, New York City, and Philadelphia that primarily makes early round investments. He was previously Professor of Decision Sciences at the Wharton School and Professor of Computer Science at the Moore School at the University of Pennsylvania from 1972 to 1985. He has been a Visiting Professor at the California Institute of Technology and the Harvard Business School. Dr. Morgan has been President of the Arca Group, Inc. since 1989, working with early stage companies from seed stage through initial public offerings. In 1996 he was a founding investor of Idealab and now serves as a director. He has served on several public company Boards, such as Franklin Electronic Publishers and Internet Brands, Inc. He is Chairman or a member of the board of many private companies including Fab.com, AxialMarkets, and PublicStuff as well as nonprofits like Cold Spring Harbor Laboratories and Math for America. He served as CEO of Kentek and Franklin during transitional periods. He was named Delaware Valley Entrepreneur of the Year in 1997. Dr. Morgan received a B.S. in physics from City College of the City University of New York and a Ph.D. in Operations Research from Cornell University. He is an author and frequent speaker at industry conferences.