Case Facts

Lilia Patricia Hernández Salas 1 Legal issues

Caldera Pharmaceuticals, Inc. v. Regents of the University of California (2012) Superior Court of the City and County of San Francisco

Fact On 2007Caldera Pharmaceuticals, Inc. (Caldera) started this action with a complaint for fraud and breach of the

"Exclusive Patent Licensing Agreement" (license Caldera executed with the Regents of theagreement) of

University

California (Regents or University) in September 2005. Because the Regents had assigned their rights under the agreement to Los Alamos National Security, LLC (LANS) inApril 2006,

Caldera made LANS a codefendant. The relevant pleading for present purposes is Caldera's second amended complaint, which was filed in July 2008. Caldera was developing four technologiesrelated to a “Method for Detecting Binding Constants Using Micro X-Ray

Fluorescence.". To help developing this technology and get patent rights, the Regents granted Caldera the "exclusive licenseto make, have made, use, import, sell and offer to sell, and have sold, LICENSED INVENTIONS and LICENSED

SERVICES under the PATENT RIGHTS." Caldera agreed to "use its best efforts" to develop thetechnology, and to make

available to the Regents "any improvements or developments"

Lilia Patricia Hernández Salas 2 Legal issues

The University agreed that it "will prosecute U.S. patentapplications for technologies and will maintain U.S. patents” The Regents agreed to provide written notification to the Licensee if the University intends to terminate prosecution of any of the U.S.patent applications they applied for. They also mention in the agreements that the costs associated with U.S. and Patent Cooperation Treaty (PCT) cases will be borne by the University. University wasassigned to fulfill the patent applications. Then Caldera alleged fraud as the University failed to pursue the patent application in the US forcing Caldera to proceed with the applications in Japan and...