Case: 22-2248 Document: 37 Page: 1 Filed: 02/09/2024
United States Court of Appeals
for the Federal Circuit
______________________
UNIVERSITY OF SOUTH FLORIDA BOARD OF
TRUSTEES,
Plaintiff-Appellant
v.
UNITED STATES,
Defendant-Appellee
______________________
2022-2248
______________________
Appeal from the United States Court of Federal Claims
in No. 1:15-cv-01549-PEC, Judge Patricia E. Campbell-
Smith.
______________________
Decided: February 9, 2024
______________________
STEVEN B. KELBER, The Kelber Law Group, Bethesda,
MD, argued for plaintiff-appellant. Also represented by
JERRY STOUCK, North Bethesda, MD.
WALTER W. BROWN, Commercial Litigation Branch,
Civil Division, United States Department of Justice, Wash-
ington, DC, argued for defendant-appellee. Also repre-
sented by BRIAN M. BOYNTON, GARY LEE HAUSKEN,
KAVYASRI NAGUMOTU, CARRIE ROSATO.
______________________
Case: 22-2248 Document: 37 Page: 2 Filed: 02/09/2024
2 UNIVERSITY OF SOUTH FLORIDA BOARD OF TRUSTEES v. US
Before REYNA, TARANTO, and STOLL, Circuit Judges.
TARANTO, Circuit Judge.
University of South Florida Board of Trustees (USF)
owns now-expired United States Patent No. 5,898,094,
which was issued in 1999 and is titled “Transgenic Mice
Expressing APPK670N,M671L and a Mutant Presenilin
Transgenes.” In 2015, USF sued the United States in the
Court of Federal Claims (Claims Court) under 28 U.S.C.
§ 1498(a), alleging that the United States was liable for in-
fringement of the ʼ094 patent because, as is undisputed be-
fore us, The Jackson Laboratory, with the government’s
authorization and consent, had been producing and using
mice covered by the patent for the government. As a de-
fense, the government argued that the United States had a
license to practice the patent, and have the patent prac-
ticed on its behalf, under 35 U.S.C. § 202(c)(4), a provision
of the Bayh-Dole Act, Pub. L. No. 96-517, § 6(a), 94 Stat.
3019–28 (1980) (codified as amended at 35 U.S.C. §§ 200–
12), which addresses patent rights in work funded by the
federal government. After summary-judgment proceed-
ings and a trial, the Claims Court agreed with the govern-
ment and entered final judgment of noninfringement.
University of South Florida, Board of Trustees v. United
States, 162 Fed. Cl. 59 (2022) (Claims Court Decision).
USF timely appealed. We have jurisdiction under 28
U.S.C. § 1295(a)(3). There is no dispute that the judgment
must be affirmed if § 202(c)(4) applies. We conclude that
the provision does apply. We therefore affirm.
I
A
The ʼ094 patent describes and claims doubly trans-
genic mice with accelerated pathology for Alzheimer’s Dis-
ease, produced by the mice’s expression of both a mutant
Swedish amyloid precursor protein transgene and a
Case: 22-2248 Document: 37 Page: 3 Filed: 02/09/2024
UNIVERSITY OF SOUTH FLORIDA BOARD OF TRUSTEES v. US 3
mutant presenilin transgene. See ʼ094 patent, Abstract
and col. 14, line 26 through col. 16, line 59. Claim 1 states:
1. A transgenic mouse with enhanced Alzheimer’s
Disease related amyloid accumulation in its brain
produced by:
producing an F1 generation mouse by cross-
ing a first transgenic mouse whose genome
comprises at least one transgene compris-
ing a DNA sequence encoding mutant pre-
senilin M146L operably linked to a
promoter with a second transgenic mouse
whose genome comprises at least one
transgene comprising a DNA sequence en-
coding APP K670N,M671L operably linked
to a promoter, wherein the first transgenic
mouse expresses the DNA sequence encod-
ing the mutant presenilin and wherein the
second transgenic mouse expresses the
DNA sequence encoding the APP; and
selecting from the offspring of the cross,
those transgenic mice whose genome com-
prises at least one DNA sequence encoding
mutant presenilin M146L operably linked
to a promoter and at least one transgene
comprising a DNA sequence encoding APP
K670N,M671L operably linked to a pro-
moter, and identifying an F1 mouse which
express both transgenes such that the F1
mouse develops accelerated deposition of
Aβ in its brain as compared to non-trans-
genic mice or either parental mouse.
Id., col. 14, lines 26–49 (emphasis added).
The application that issued as the ʼ094 patent was filed
on July 30, 1997, but it claims priority to a provisional ap-
plication filed on October 21, 1996. Drs. Karen Duff and
Case: 22-2248 Document: 37 Page: 4 Filed: 02/09/2024
4 UNIVERSITY OF SOUTH FLORIDA BOARD OF TRUSTEES v. US
John Hardy are the inventors named on the ʼ094 patent.
In October 1996, just before the filing of the October 21,
1996 provisional application, the two inventors assigned to
USF the patent rights for inventions described in that pro-
visional application.
B
The invention of the ʼ094 patent involves doubly trans-
genic mice having a particular property of developing an
identified symptom of Alzheimer’s Disease on an “acceler-
ated” basis. The invention was conceived by Drs. Duff and
Hardy while both were professors employed by USF. J.A.
3762. At USF, Drs. Duff and Hardy worked with Dr. David
Morgan and Dr. Marcia Gordon, both of whom were also
professors at USF. The role of the latter two scientists, as
relevant here, was to conduct (with assistance within their
laboratory) the tissue analysis needed to determine, for
mice resulting from two gene modifications, when in their
aging process the mice developed the claimed symptom.
The first litter of mice expressing both of the two
transgenes at issue—a mutant Swedish amyloid precursor
protein transgene and a mutant presenilin transgene—was
born at USF on August 21, 1996. J.A. 631–32, 3890–91.
But time was needed to determine if those mice would ac-
tually develop Alzheimer’s Disease pathology at an accel-
erated rate.
During that period of mouse aging, Dr. Hardy changed
his employer from USF to Mayo, and Dr. Duff did the same,
in December 1996, shortly after Dr. Hardy. The doubly
transgenic mice remained at USF after Drs. Duff and
Hardy moved to Mayo. While at Mayo, Dr. Duff continued
to oversee the doubly transgenic mouse project. J.A. 152–
54. The day-to-day work of caring for the mice, however,
became the responsibility of Dr. Gordon in Dr. Morgan’s la-
boratory. J.A. 529. Additionally, Dr. Gordon, at her USF
lab, performed immunohistochemistry, or tissue-examina-
tion, work on the brains of sacrificed doubly transgenic
Case: 22-2248 Document: 37 Page: 5 Filed: 02/09/2024
UNIVERSITY OF SOUTH FLORIDA BOARD OF TRUSTEES v. US 5
mice to identify whether and when the mice developed Alz-
heimer’s Disease pathology. J.A. 152–54, 148–50.
An actual reduction to practice of the invention claimed
the ’094 patent required construction of an embodiment
and recognition that the embodiment worked for its in-
tended purpose. See Cooper v. Goldfarb, 154 F.3d 1321,
1327 (Fed. Cir. 1998); Estee Lauder Inc. v. L’Oreal, S.A.,
129 F.3d 588, 594–95 (Fed. Cir. 1997); Hahn v. Wong, 892
F.2d 1028, 1032 (Fed. Cir. 1989); Scott v. Finney, 34 F.3d
1058, 1062 (Fed. Cir. 1994); Knorr v. Pearson, 671 F.2d
1368, 1375 (CCPA 1982). Here, the first document record-
ing the actual reduction to practice of the doubly transgenic
mice—the fact and recognition of the sooner-than-other-
wise development of the specified Alzheimer’s Disease pa-
thology in those mice—is a facsimile sent on April 25, 1997,
by Dr. Duff, then at Mayo, to William Coppola, at USF’s
office for technology transfer. J.A. 1271–74, 142–45, 148.
The parties accept, for present purposes, that the first ac-
tual reduction to practice occurred shortly before that
promptly sent communication. Claims Court Decision, 162
Fed. Cl. at 64 (“The parties agree, and the evidence demon-
strates, that the invention described in the ’094 patent was
first reduced to practice in April 1997.”). We therefore refer
to the first actual reduction to practice as occurring in April
1997.
Dr. Duff marked the facsimile “urgent” because “[t]his
was the first time we [the researchers] had seen . . . this
pathology developing so rapidly in these mice.” J.A. 148.
To show the pathology developing, the facsimile included
two figures demonstrating that the doubly transgenic mice
had amyloid plaques, which play a role in Alzheimer’s Dis-
ease, at an age lower than the age at which previously iden-
tified mice had such plaques. J.A. 1272–74, 143–44. Dr.
Duff noted on the figures in the facsimile: “N.B. [nota bene]
work performed by D[avid] Morgan at USF, in collabora-
tion.” J.A. 1273, 4233–34. The tissue analysis (immuno-
histochemistry testing) that identified the premature
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6 UNIVERSITY OF SOUTH FLORIDA BOARD OF TRUSTEES v. US
development of amyloid plaques was performed within the
Morgan-Gordon laboratory at USF. J.A. 151–54, 1273,
4233–34; see USF’s Opening Br. at 6–7, 21.
In July 1997, Dr. Duff, along with Dr. Hardy, Dr. Mor-
gan, Dr. Gordon, and others, submitted a paper to Nature
Medicine, describing the doubly transgenic mice and their
accelerated development of the Alzheimer’s Disease-re-
lated property. The paper was accepted in November 1997
and published in January 1998. Leigh Holcomb et al., Ac-
celerated Alzheimer-type phenotype in transgenic mice car-
rying both mutant amyloid precursor protein and
presenilin 1 transgenes, 4 Nature Medicine 97 (1998) (Na-
ture Medicine Article). The article notes that “[t]his work
was supported by the Mayo/USF Program Project on the
presenilins,” Nature Medicine Article, at 100, citing,
though with a typographical error, the government grant
described next.
C
In September 1995, Dr. Hardy, while still employed by
USF, submitted a grant application to the National Insti-
tute of Aging, one of the institutes within the National In-
stitutes of Health (NIH). The application, titled “The Role
of the Presenilins in Alzheimer’s Disease,” proposed “five[]
mutually interlinking projects aimed at elucidating the
role of the presenilins in Alzheimer’s [D]isease.” J.A. 1793,
1795; see J.A. 1793–2044. Key personnel on the project, as
stated in the grant application, included Dr. Hardy, Dr.
Duff, Dr. Morgan, and Dr. Gordon, then all employed by
USF. J.A. 1795, 2001–04 (addressing tissue-analysis work
involving presenilins). The proposed period of government
support ran from July 1, 1996, to June 30, 2001. J.A. 1793.
The scientists’ already-begun research continued dur-
ing the year that consideration of the grant application was
underway. Just as the 1996 fiscal year was ending, NIH
awarded the applied-for grant, which had a project start
date of September 30, 1996. J.A. 3237; see also J.A. 2089,
Case: 22-2248 Document: 37 Page: 7 Filed: 02/09/2024
UNIVERSITY OF SOUTH FLORIDA BOARD OF TRUSTEES v. US 7
3235–44. The findings and record before us make clear
that the grant-covered project included the specific doubly
transgenic mice that were the subject of what became the
’094 patent (for which the provisional patent application
was in preparation, J.A. 1162–63). See J.A. 2631–36,
2645–50 (Stephen Snyder, the relevant NIH administrator,
testifying that the creation and study of the doubly trans-
genic mice expressing both a mutant Swedish amyloid pre-
cursor protein transgene and a mutant presenilin
transgene were within the program project grant); see also
J.A. 4080. Just before the award was made, the grantee
designated in the application was changed from USF to
Mayo, to which Dr. Hardy was in process of switching his
employment. J.A. 3237; see also J.A. 2089. The grant
therefore was made to Mayo, and funds from the NIH grant
were available to Mayo as of October 1, 1996. J.A. 2603–
04.
Because Mayo was the grantee, but some grant-covered
work was to take place at USF, government policies imple-
menting the Bayh-Dole Act required that Mayo and USF
would in due course enter into a subcontract with each
other in order for grant money received by Mayo to be paid
to USF for the grant-covered work of individuals remaining
there, such as Drs. Morgan and Gordon. See J.A. 2607–11
(NIH official Stephen Snyder); J.A. 567 (Dr. Morgan); see
also U.S. Department of Health and Human Services, Re-
vised NIH Grant Policies and Procedures, 14 NIH Guide for
Grants and Contracts, No. 7, June 21, 1985, at 23 (attached
document 4820—Establishing and Operating Consortium
Grants, at 2–3) (NIH Grant Policies).
In November 1997, more than a year after the NIH
grant was awarded, Mayo and USF executed a written sub-
contract (“Consortium Agreement”), J.A. 1265–70, which
states that the agreement was executed to comply with the
just cited NIH Guidelines, J.A. 1265. The November 1997
agreement states that the start of its “effective period”—
when its obligations took effect—was September 1, 1997.
Case: 22-2248 Document: 37 Page: 8 Filed: 02/09/2024
8 UNIVERSITY OF SOUTH FLORIDA BOARD OF TRUSTEES v. US
J.A. 1266. And it expressly provides for treatment of pa-
tents and inventions in accordance with the Bayh-Dole Act
(and implementing regulations, 45 C.F.R. chs. VI, VIII
(1997)), thus supplying USF’s agreement to the Act’s gov-
ernment-license provision. J.A. 1268.
II
In the present action by USF, the Claims Court
granted judgment for the government on the ground that it
had a license, under the Bayh-Dole Act, 35 U.S.C.
§ 202(c)(4), to have The Jackson Laboratory practice the
patent by creating and using patent-covered mice (with the
two transgenes and accelerated plaque development re-
quired by the ’094 patent). As relevant here, it is not dis-
puted that The Jackson Laboratory was so practicing the
patent and that it was doing so for the government and
with the government’s authorization and consent. The dis-
pute that is before us is whether the invention was a “sub-
ject invention” within § 202(c)(4), which gives the
government a license (to practice or have practiced for it)
certain federally funded inventions.
A
Before 1980, federal agencies followed a variety of pol-
icies, implemented in provisions of grants or contracts for
the furnishing of government funding for research, to ad-
dress the disposition of patent rights in inventions result-
ing from the government-funded research. See, e.g., H.R.
Rep. No. 96-1307, pt. 1, at 3, 5 (1980); S. Rep. No. 96-480,
at 2–3 (1979); Technical Development Corp. v. United
States, 597 F.2d 733, 745–46 (Ct. Cl. 1979); Mine Safety
Appliances Co. v. United States, 364 F.2d 385, 387–93 (Ct.
Cl. 1966). Some of the government patent policies required
government-fund recipients to allow the government to
own these patent rights. See, e.g., S. Rep. No. 96-480, at 2
(1979). In the Bayh-Dole Act, with a particular focus on
government-funded research by universities and small
businesses, Congress sought to reduce the disuniformity of
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UNIVERSITY OF SOUTH FLORIDA BOARD OF TRUSTEES v. US 9
government policies and also to strengthen the patent
rights of government-fund recipients, under conditions
that protected government interests, in order to incentivize
commercial development of patentable inventions into use-
ful products. See H.R. Rep. No. 96-1307, pt. 1, at 3; S. REP.
NO. 96-480, at 2–3, 15–30. The Act itself declares its “pol-
icy and objective.” 35 U.S.C. § 200. The Supreme Court
noted key purposes: “In 1980, Congress passed the Bayh-
Dole Act to ‘promote the utilization of inventions arising
from federally supported research,’ ‘promote collaboration
between commercial concerns and nonprofit organizations,’
and ‘ensure that the Government obtains sufficient rights
in federally supported inventions.’” Board of Trustees of
the Leland Stanford Junior University v. Roche Molecular
Systems, Inc., 563 U.S. 776, 782 (2011) (quoting 35 U.S.C.
§ 200) (Stanford v. Roche).
“To achieve these aims, the Act allocates rights in fed-
erally funded ‘subject invention[s]’ between the Federal
Government and federal contractors.” Id. (alteration by
Stanford v. Roche Court) (quoting § 201(e)). The Act “pro-
vides that contractors may ‘elect to retain title to any sub-
ject invention.’” Id. (quoting § 202(a)). A “contractor” is
“any person, small business firm, or nonprofit organization
that is a party to a funding agreement.” § 201(c). A “fund-
ing agreement” is
any contract, grant, or cooperative agreement en-
tered into between any Federal agency, other than
the Tennessee Valley Authority, and any contrac-
tor for the performance of experimental, develop-
mental, or research work funded in whole or in part
by the Federal Government. Such term includes
any assignment, substitution of parties, or subcon-
tract of any type entered into for the performance
of experimental, developmental, or research work
under a funding agreement as herein defined.
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10 UNIVERSITY OF SOUTH FLORIDA BOARD OF TRUSTEES v. US
§ 201(b). And an “invention” includes “any invention or
discovery which is or may be patentable or otherwise pro-
tectable under this title,” and a “subject invention” is “any
invention of the contractor conceived or first actually re-
duced to practice in the performance of work under a fund-
ing agreement.” § 201(d), (e). 1
In light of all of those definitions set out, the key provi-
sion of the Bayh-Dole Act for this case states:
(c) Each funding agreement with a small business
firm or nonprofit organization shall contain appro-
priate provisions to effectuate the following: . . .
(4) With respect to any invention in which the con-
tractor elects rights, the Federal agency shall have
a nonexclusive, nontransferrable, irrevocable,
paid-up license to practice or have practiced for or
on behalf of the United States any subject inven-
tion throughout the world[.]
§ 202(c)(4).
B
In this case, on the § 202(c)(4) issue in dispute before
us, the Claims Court, before trial, denied USF’s motion for
summary judgment that § 202(c)(4) was inapplicable. Uni-
versity of South Florida, Board of Trustees v. United States,
146 Fed. Cl. 274, 285–89 (2019) (Summary Judgment Rul-
ing). The Claims Court subsequently denied USF’s motion
in limine to exclude testimony of Drs. Gordon and Morgan
on that issue. University of South Florida, Board of Trus-
tees v. United States, 154 Fed. Cl. 145, 147–48 (2021). The
Claims Court then held a trial, which addressed several
1 The definitions of “invention” and “subject inven-
tion” also address plant varieties that may be protected by
the Plant Variety Protection Act, 7 U.S.C. § 2321 et seq.
That language is not applicable here.
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UNIVERSITY OF SOUTH FLORIDA BOARD OF TRUSTEES v. US 11
issues, including the license issue. After trial, the Claims
Court determined that § 202(c)(4) applied, giving the gov-
ernment a license, and on that basis the court entered judg-
ment for the government. Claims Court Decision, 162 Fed.
Cl. at 60.
The Claims Court made findings of fact confirming the
events and actions described supra. See id. at 60–63. The
Claims Court also described certain documents indicating
that USF set up internal accounts associated with the NIH
grant project and expected money from that grant partially
to fund at least Dr. Gordon’s salary. Id. at 62–63; see, e.g.,
J.A. 2050–58, 2086, 3860. Relatedly, the Claims Court re-
cited testimony from Dr. Morgan and Dr. Gordon about
when USF actually received grant money, which included
testimony about the difficulty of recalling precisely what
occurred two decades earlier and testimony about the sys-
tem of USF “‘underwriting’” salary and other expenses and
getting reimbursed for the “‘advance’” once grant money
covering the earlier work eventually arrived. Claims Court
Decision, 162 Fed. Cl. at 62–63; see, e.g., J.A. 521–26, 545–
54, 565–69, 592–98 (Dr. Morgan); J.A. 623–29 (Dr. Gor-
don).
With respect to USF’s receipt of grant money from
Mayo, the Claims Court clearly found that Mayo “paid for
the work done by Dr. Gordon at USF with the NIH grant
funds,” including (what is crucial here) the April 1997
work. Claims Court Decision, 162 Fed. Cl. at 65. USF no-
where disputes that finding on appeal to the extent it
means that grant funds eventually went from Mayo to USF
to pay for the April 1997 work, though not necessarily at
the time of the work or, indeed, before Mayo and USF en-
tered into the formal contract later that year. Given the
evidence recited thereafter in support, the Claims Court’s
finding may mean no more than that. Id. The Claims
Court went on to say that “[t]he greater weight of the trial
testimony also established that [USF] was using NIH
funds by December 1996 to pay for costs associated with
Case: 22-2248 Document: 37 Page: 12 Filed: 02/09/2024
12 UNIVERSITY OF SOUTH FLORIDA BOARD OF TRUSTEES v. US
conducting the immunohistochemistry work that was a key
part of the research that led to the ’094 patent.” Id. (em-
phasis added). That statement suggests a finding that
USF received money from Mayo by December 1996, but the
correctness of that interpretation of the statement is less
than clear, at least because of the two citations immedi-
ately following it—which suggest the scenario in which
USF was “using NIH funds” in an accounting sense, i.e.,
itself paying for the work in the expectation of being reim-
bursed eventually by NIH money from Mayo, which in fact
occurred. Id.
Timing of funds transfer aside, the Claims Court’s key
finding was that “beginning in October 1996, [USF] oper-
ated [in the relevant work on the invention] pursuant to an
implied contract with the Mayo Clinic for grant funds un-
der the” NIH grant. Id. The Claims Court found that the
evidence established an implied-in-fact contract (a meeting
of the minds inferred from the surrounding circumstances),
stating: “Regardless of whether [USF] underwrote those
funds for a time before money flowed from the Mayo Clinic,
it is clear in the record that [USF] had a ‘tacit understand-
ing’ with Mayo that the funds would eventually arrive.” Id.
at 66 (quoting Atlas Corp. v. United States, 895 F.2d 745,
754 (Fed. Cir. 1990)). Although the government argued in
the alternative that there was an implied-in-law contract
between Mayo and USF, see Summary Judgment Ruling,
146 Fed. Cl. at 287 (noting the government’s argument);
Def.’s Post-Trial Br. at 10–11, Claims Court Decision
(March 31, 2022), ECF No. 279, the Claims Court had no
need to address, and did not address, that argument (which
the government has not renewed on appeal).
Based on its findings, the Claims Court determined
that USF was a “contractor” having an implied-in-fact sub-
contract that was a “funding agreement”; the invention
was an “invention of the contractor,” given the assignment
to USF; and the invention was a “subject invention” in that
it was “first actually reduced to practice” in April 1997 “in
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UNIVERSITY OF SOUTH FLORIDA BOARD OF TRUSTEES v. US 13
the performance of” the funding agreement. Claims Court
Decision, 162 Fed. Cl. at 66–67. The government therefore
had a license under § 202(c)(4) to practice the ’094 patent,
or have the patent practiced for or on behalf of it by The
Jackson Laboratory, as asserted by USF. Id. at 67. That
conclusion required judgment for the government against
the claim under 28 U.S.C. § 1498(a).
III
We decide legal issues presented by the Claims Court
decision de novo, and we review its factual findings for
clear error. Gaylord v. United States, 777 F.3d 1363, 1367
(Fed. Cir. 2015). “A finding is ‘clearly erroneous’ when alt-
hough there is evidence to support it, the reviewing court
on the entire evidence is left with the definite and firm con-
viction that a mistake has been committed.” United States
v. United States Gypsum Co., 333 U.S. 364, 395 (1948); see
Anderson v. City of Bessemer City, 470 U.S. 564, 573–74
(1985); Bitmanagement Software GmBH v. United States,
989 F.3d 938, 948 (Fed. Cir. 2021); Oliveira v. United
States, 827 F.2d 735, 742 (Fed. Cir. 1987).
A
We proceed on the basis of the following facts, reflected
in findings of fact by the Claims Court that are not clearly
erroneous based on the record. The April 1997 work that
first actually reduced the ’094 patent invention to practice
was covered by the NIH grant. Mayo and USF entered into
an express subcontract in November 1997 whereby Mayo
would pay USF money received from NIH under the grant
for work covered by the grant. USF in fact accepted pay-
ment from Mayo, using funds from the NIH grant, for the
April 1997 work at issue. See, e.g., Claims Court Decision,
162 Fed. Cl. at 64. On appeal, USF presents no substantial
challenge to any of those findings of fact.
USF does present a factual challenge regarding when
Mayo paid NIH money to USF for the April 1997 work.
Case: 22-2248 Document: 37 Page: 14 Filed: 02/09/2024
14 UNIVERSITY OF SOUTH FLORIDA BOARD OF TRUSTEES v. US
USF argues that the record makes it clear that USF did not
receive such money from Mayo at the time of the April 1997
work, or at any time before Mayo and USF entered into the
express subcontract in November 1997. The government
insists that the Claims Court found otherwise and had ad-
equate evidentiary support to do so.
We do not resolve this dispute. Specifically, we do not
decide whether the Claims Court even made such a find-
ing—or whether, instead, it is best understood as having
found only (what is not disputed on appeal) that the April
1997 work was paid for by Mayo with NIH funds at some
time, e.g., after Mayo and USF signed the November 1997
subcontract. Nor do we decide whether any such finding
would be sustainable under the clear-error standard of re-
view applied to the record as a whole—or whether, instead,
the record must be read as showing simply that USF ad-
vanced the funding at issue (e.g., for salaries) and only later
received what amounted to reimbursement for those ad-
vances when it received NIH money from Mayo upon the
signing of the November 1997 express subcontract.
Besides accepting the above-identified facts clearly es-
tablished in the trial court, we proceed by accepting, for
purposes of this appeal, USF’s position on the timing-of-
payment issue. That is, we accept that USF received NIH
money from Mayo—including money for the April 1997
work—when the November 1997 express subcontract was
in place and not earlier.
B
The question to be decided, on that basis, is whether
the April 1997 work (the first actual reduction to prac-
tice)—for which USF in fact received government funds
supplied, through Mayo, by the NIH grant—was “in the
performance of work under a funding agreement.” 35
U.S.C. § 201(e). If so, the government had the license, un-
der § 202(c)(4), that defeats USF’s infringement claim here.
Case: 22-2248 Document: 37 Page: 15 Filed: 02/09/2024
UNIVERSITY OF SOUTH FLORIDA BOARD OF TRUSTEES v. US 15
The Claims Court answered the question in the affirma-
tive.
USF’s argument for reversal of the Claims Court’s
judgment has two necessary premises. The first is that any
“funding agreement” adequate to trigger § 202(c)(4) must
be in place at the time of the relevant work (here, a first
actual reduction to practice in April 1997), so that the No-
vember 1997 subcontract (whose execution and effective
date were later than April 1997) does not suffice to trigger
§ 202(c)(4). The second is that there was no legally ade-
quate implied agreement at the time of the April 1997 work
(indeed, at all), and the Claims Court’s contrary determi-
nation must be reversed.
We conclude that USF’s first premise is legally incor-
rect in the circumstances presented here, so the November
1997 subcontract is adequate to give the government a
§ 202(c)(4) license. Although the Claims Court decided the
case on the implied-contract ground, and the parties have
accordingly focused their arguments on that ground, the
underlying premise of a requirement of a contract in effect
at the time of the relevant work is logically necessary to the
bottom-line result of no license that USF urges. The valid-
ity of this premise presents a legal issue requiring determi-
nation of no facts in this case other than the ones identified
above that are beyond reasonable dispute here. In these
circumstances, we may address this legal premise, the re-
jection of which is a ground for affirmance, without further
examining the extent to which the government has briefed
the issue. See, e.g., United States National Bank of Oregon
v. Independent Insurance Agents of America, Inc., 508 U.S.
439, 447 (1993); Arcadia v. Ohio Power Co., 498 U.S. 73, 77
(1990); United States v. New York Telephone Co., 434 U.S.
159, 166 n.8 (1977); In re Seagate Technology, LLC, 497
F.3d 1360, 1371–72 (Fed. Cir. 2007) (en banc), abrogated in
a different respect by Halo Electronics, Inc. v. Pulse Elec-
tronics, Inc., 579 U.S. 93, 104–10 (2016); Granite
Case: 22-2248 Document: 37 Page: 16 Filed: 02/09/2024
16 UNIVERSITY OF SOUTH FLORIDA BOARD OF TRUSTEES v. US
Management Corp. v. United States, 416 F.3d 1373, 1378
(Fed. Cir. 2005).
On the factual premises stated above, USF accepted
(received) NIH funds from Mayo, pursuant to the Novem-
ber 1997 subcontract to the NIH grant, to pay for the April
1997 work, as well as ongoing work. We conclude that the
April 1997 work, i.e., the first actual reduction to practice,
was “in the performance of work under a funding agree-
ment,” § 201(e)—a subcontract between Mayo and USF to
the NIH grant (the latter a funding agreement of NIH with
Mayo). The statutory terms are broad enough to cover the
facts on which we decide this appeal.
The November 1997 agreement between Mayo and
USF was a “funding agreement,” § 201(b). The original
NIH grant awarded to Mayo was itself a funding agree-
ment because it was a grant entered into between NIH and
Mayo for the performance of experimental, developmental,
or research work funded in whole or in part by the federal
government, id. The November 1997 agreement, then, was
a funding agreement because it was an express “subcon-
tract” entered into for the performance of experimental, de-
velopmental, or research work under the 1996 NIH grant,
id.
The work of tissue analysis (constituting the first ac-
tual reduction to practice in April 1997) was covered by the
1996 NIH grant. The November 1997 agreement signed by
USF and Mayo did not limit the scope of the NIH grant.
See J.A. 1265–70. The April 1997 work was in “the perfor-
mance of work under [those] funding agreement[s]” pursu-
ant to a recognized meaning of “under” applicable to the
statutory phrase, § 201(e): It was substantively covered by
both, and (on the facts we accept) both provided money to
pay for it. See Random House Webster’s Unabridged Dic-
tionary 2059 (2d ed. 2001) (defining “under” as “14. in ac-
cordance with”); Bryan A. Garner, Garner’s Dictionary of
Legal Usage 910, 737–38 (3d ed. 2011) (stating that “under
Case: 22-2248 Document: 37 Page: 17 Filed: 02/09/2024
UNIVERSITY OF SOUTH FLORIDA BOARD OF TRUSTEES v. US 17
is preferable to *pursuant to when the noun that follows
refers to a . . . contractual provision,” and defining “pursu-
ant to” as “(1) in accordance with; (2) under; (3) as author-
ized by; or (4) in carrying out”).
USF opposes this conclusion on the basis of a time-
based limitation it urges is present in the Bayh-Dole Act
provisions. USF argues that the November 1997 agree-
ment is legally insufficient, even if it provided funds to pay
for the pre-agreement, April 1997 work, because it was en-
tered into in November 1997 and had an effective date in
September 1997, after the April 1997 work. We reject this
suggested temporal limitation on the scope of the relevant
Bayh-Dole Act language.
The Act says that “funding agreement” includes “any
. . . subcontract of any type” for the performance of work
under a funding agreement. § 201(b). That breadth-indi-
cating language supports inclusion within the provision of
a subcontract that provides for, among other things, pay-
ment for work already performed before the subcontract is
executed or its “effective” date (when its obligations take
effect, see Date, Black’s Law Dictionary (11th ed. 2019) (de-
fining “effective date”)). A contract may provide for pay-
ment for work previously done at least where, as here, the
contract also pays for work yet to be done. Restatement
(Second) of Contracts § 80 (American Law Institute 1981)
(“(1) There is consideration for a set of promises if what is
bargained for and given in exchange would have been con-
sideration for each promise in the set if exchanged for that
promise alone. (2) The fact that part of what is bargained
for would not have been consideration if that part alone
had been bargained for does not prevent the whole from
being consideration.”); 17 C.J.S. Contracts § 174 (2023) (“A
promise founded on consideration which is partly past and
partly present or executory is enforceable, although in a
sense no resort to the past consideration need be had as the
new or executory consideration is conceptually adequate to
support enforceability of the contract.”); 17A Am. Jur. 2d
Case: 22-2248 Document: 37 Page: 18 Filed: 02/09/2024
18 UNIVERSITY OF SOUTH FLORIDA BOARD OF TRUSTEES v. US
Contracts § 147 (2023) (“Where the consideration is partly
past and partly future, a single promise as to both will be
sustained.”); see also Hackin v. Pioneer Plumbing Supply
Co., 457 P.2d 312, 318 (Ariz. Ct. App. 1969); Jim Murphy
& Associates, Inc. v. LeBleu, 511 So. 2d 886, 891 (Miss.
1987); Johnson v. Hazaleus, 338 P.2d 345, 347 (Okla. 1959);
Kahn v. Lischner, 275 P.2d 539, 543 (Cal. Dist. Ct. App.
1954); W. T. Rawleigh Co. v. Miller, 73 P.2d 552, 554 (Mont.
1937).
USF’s own position that Mayo paid for the April 1997
work with the relevant NIH grant funds after the Novem-
ber 1997 contract was executed or took effect confirms that
such backward-reaching payment is a recognized contract
practice. And it confirms that the November 1997 contract
included Mayo’s promise to pay for the April 1997 work
with the NIH funds. USF nowhere suggests that Mayo did
or properly could pay for that work with the NIH grant
funds outside a subcontract, as Mayo was obligated to en-
ter into subcontracts for funded work with its consortium
partners.
This understanding of the November 1997 agreement,
and of its meaning for the Bayh-Dole Act, is consistent with
the agreement’s provision stating that the “effective period
of this Agreement shall be from September 1, 1997,
through August 31, 1998, unless otherwise provided for by
modification in this Agreement.” J.A. 1266. The “effective
period” merely identifies when the obligations (specified
elsewhere in the contract) are binding. See, e.g., 17A Am.
Jur. 2d Contracts § 323 (2023) (equating “effective date”
with the date on which “a written contract becomes bind-
ing”); 1 Albert H. Kritzer et al., International Contract
Manual § 19:23 (2023) (“[T]he effective date of the contract
will ordinarily be the date on which the contract first cre-
ates a legal obligation on both parties.”); cf. Hamilton v.
Lanning, 560 U.S. 505, 518 (2010) (explaining that “effec-
tive date” of plan of reorganization is when plan is adopted
“and becomes binding”). When one party’s work performed
Case: 22-2248 Document: 37 Page: 19 Filed: 02/09/2024
UNIVERSITY OF SOUTH FLORIDA BOARD OF TRUSTEES v. US 19
before the contract took effect is included in what the other
party agrees to pay for (along with yet-to-be-performed
work from the first party), that recognized type of contract
does not turn already-completed pre-effective-date work
into work the first party was obligated to perform, when
there had been no obligation to perform it when it was per-
formed—as USF insists is the case for the April 1997 work.
Of course, such a contract does create an obligation relating
to that work—at least the second party’s voluntarily under-
taken obligation to pay for that work (or do other things
because of that work)—but the already-completed perfor-
mance of the first party’s work remains not obligatory.
Thus, the start of the “effective period” on September 1,
1997—for a one-year period to align with NIH’s designa-
tion of the second year of the NIH grant—does not exclude
the April 1997 work from being under the formal agree-
ment, in that it was part of what Mayo undertook to pay
for and did pay for with the NIH grant funds through the
formal contract.
Understanding the Bayh-Dole Act language to embrace
such past-work funding fits the statutory context. To begin
with, consistent with the Act, our understanding respects,
rather than overrides, the patent owner’s choice whether
to enter into a subcontract and on what terms, including
what work will be paid for under it. Here, on the facts that
are the basis for our decision, and against the well-known
background of the Bayh-Dole Act regime, USF entered into
the November 1997 agreement (which expressly provides
for application of the Act) and accepted the NIH funding
from Mayo for the April 1997 work under that agreement.
The statutory interpretation we adopt fits the statu-
tory context more generally. It reflects the stated statutory
policy to “ensure that the Government obtains sufficient
rights in federally supported inventions,” § 200, where the
patent owner accepts federal funds under an agreement
that invokes the Act. Even before enactment of the Bayh-
Dole Act, this court’s predecessor had given a “liberal
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20 UNIVERSITY OF SOUTH FLORIDA BOARD OF TRUSTEES v. US
construction” to “the general phrase ‘in the performance
of’” used in some government funding contracts, explaining
that the construction ensures that, in such circumstances,
the public, having paid for an invention, would “‘not again
be taxed for its use, nor excluded from its use[,] nor permit-
ted to use it upon restrictive conditions advantageous to no
one but the patent owner.’” Technical Development, 597
F.2d at 745 (quoting Mine Safety Appliances, 364 F.2d at
392). This policy applies even when the agreement pro-
vides for payment of government funds for pre-agreement
work having the defined relationship to the invention
(here, that the government-funded work includes the first
actual reduction to practice of the invention).
This conclusion is strongly bolstered by the record in
this case, which suggests that what occurred here is not an
uncommon fact pattern in government funding of research
conducted in part by non-grantee members of a consortium
called for in a government grant. Specifically, the record
makes clear that subcontracts are commonly not executed
until sometime after the grant is awarded, yet the grant-
covered work proceeds without waiting for the inking of a
subcontract. The commonplace nature of this scenario sug-
gests that, if USF’s time-restrictive view of the Act were
adopted, one or more policies of the Act might be im-
paired—e.g., by the government insisting, in order to pro-
tect its rights, that research by a consortium member be
postponed until a subcontract was executed. Our under-
standing of the statute avoids such impairment by focusing
on the facts of agreement, coverage, and actual funding,
whether forward-looking or backward-looking.
Several witnesses testified, without contradiction, that
it was common for there to be a delay in subcontracting af-
ter award of a government grant. J.A. 136 (Dr. Duff, stat-
ing that subcontracts are “very often delayed”); J.A. 523
(Dr. Morgan, stating that subcontracting “usually does not
occur immediately upon the award of the grant itself”); see
also J.A. 624–25 (Dr. Gordon stating “[u]niversity
Case: 22-2248 Document: 37 Page: 21 Filed: 02/09/2024
UNIVERSITY OF SOUTH FLORIDA BOARD OF TRUSTEES v. US 21
bureaucracy” slowed down the agreement between USF
and Mayo); J.A. 2607–11 (Mr. Snyder discussing post-
award subcontracting); NIH Grant Policies, supra (contem-
plating the same). Other aspects of the record—e.g., the
absence in the record of any written subcontract for more
than a year after the NIH grant award, Dr. Morgan’s own
uncertainty about when money actually flowed from Mayo
to USF, the evident expectation by USF that it would re-
ceive grant funds—tend to confirm that, in practice, grant-
ees and their consortium institutions often do not place
high priority on speedily getting a formal subcontract exe-
cuted after a grant is awarded.
At the same time, it is of great significance for the ad-
vancement of useful knowledge (here, in medicine) and for
many particular grant projects that research continue
without interruption, suggesting that all persons con-
cerned, including the government, would expect the grant-
covered work to proceed immediately upon award of the
grant, without awaiting a formal subcontract. Notably, the
record in this case indicates that it was clear from the out-
set of the NIH grant project that the USF work that was
part of it would have to proceed without delay. The first
litter of the doubly transgenic mice was born in August
1996, just before the late-September NIH award. The re-
sponsibility for the colony remained at USF, even after Dr.
Duff moved to Mayo in December. J.A. 529. Dr. Gordon
and her USF colleagues could not have waited to complete
the work of caring for the mice. Dr. Gordon was also re-
sponsible for the immunohistochemistry work on the
brains of sacrificed mice in the colony to identify the devel-
opment of Alzheimer’s Disease pathology. J.A. 152–54,
148–50. This work was highly time sensitive: A core objec-
tive was to determine the timing of such development, and
the immunohistochemistry testing therefore had to begin,
and it did begin, no more than a few months after the birth
of the mice. See Nature Medicine Article at 97–98; J.A.
3231–32 (comparing deposits in the brains of sacrificed 13-
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22 UNIVERSITY OF SOUTH FLORIDA BOARD OF TRUSTEES v. US
to 16-week-old singly transgenic mice, which express only
a presenilin transgene, with those in the brains of sacri-
ficed 13- to 16-week-old doubly transgenic mice and com-
paring deposits in the brains of sacrificed 24- to 32-week-
old singly transgenic mice with those in the brains of sac-
rificed 24- to 32-week-old doubly transgenic mice). Such
immediate performance of the work, beyond being neces-
sary as a scientific matter, was also important for grant
administration, as NIH had to decide each year whether to
renew the funding of the grant, requiring an evaluation of
progress in the project. See J.A. 2616.
For all of the foregoing reasons, we reject USF’s reli-
ance on the November 1997 agreement’s effective date and
execution date as a basis for not recognizing it as a funding
agreement sufficient to give rise to the license rights of the
government under § 202(c)(4). The Claims Court’s judg-
ment of non-infringement is correct on this ground. Given
this conclusion, it is not necessary that we address whether
the Claims Court’s finding of an implied-in-fact contract
was correct.
IV
The judgment of no liability for infringement by reason
of a license is affirmed.
The parties shall bear their own costs.
AFFIRMED
University of South Florida Board of Trustees v. United States
Combined Opinion