U.S. Department of Energy march-in right cases

Ventana Medical Systems, Inc., march-in request 

1999. February 10. Jonathan Cohen, Director of Intellectual Property for Ventana Medical Systems, Inc., sends letter to Paul A. Gottlieb, Esq., Assistant General Counsel for Technology Transfer and Intellectual Property at the U.S. Department of Energy, regarding their February 2, 1999, meeting about government rights in the Joe Gray and Dan Pinkel in-situ hybridization technology (ISH) patent portfolio.

1999. March 3. Paul A. Gottlieb, Esq., from the U.S. Department of Energy, replies to the February 10, 1999, letter from Jonathan Cohen, Director of Intellectual Property for Ventana Medical Systems, Inc.

1999. June 22. Ventana Medical Systems asks the U.S. Secretary of Energy Bill Richardson to use march-in rights over patents related to a method for staining chromosomal DNA by ISH, used for detecting and monitoring genetic abnormalities associated with cancers, held by the University of California and licensed to Vysis, Inc.

1999. September 11. The Regents of the University of California and Vysis, Inc, respond to the march-in right request by Ventana Medical Systems, via their attorneys Lynn H. Pasahow, Donn P. Pickett, and Michael J. Shuster from the law firm McCutchen, Doyle, Brown, & Enersen, LLP.

1999. September 21. Jonathan Cohen from Ventana Medical Systems writes a letter to Richard Lambert, Esq., Counsel for Intellectual Property at the National Institutes of Health (NIH), requesting “expert testimony on our behalf, or technical support for the DoE to help us ascertain what are commercial reasonable licensing terms for the subject invention.”

1999, September 30. Richard Lambert from the NIH replies to the September 21, 1999 letter by Jonathan Cohen, denying his request for assistance in the form of expert testimony or technical support.

Berkeley HeartLab, Inc., march-in request 

2002, November 11. Berkeley HeartLab, Inc., asks the U.S. Secretary of Energy Spencer Abraham and Assistant General Counsel for Technology Transfer and Intellectual Property at the Department of Energy Paul A. Gottlieb to use march-in rights over patents related to ion mobility analysis for rapid identification of cardiovascular disease indicators.