In a case brought by a former research professor against Duke University for infringing two patents relating to free electron laser technology, the U.S. Court of Appeals for the Federal Circuit held that "experimental use" lives on as a narrow defense to a claim infringement. Madey v. Duke University, Case No. 01-1567 (Fed. Cir. Oct. 3, 2002).
The Federal Circuit held that despite the U.S. Supreme Court ruling in Markman that intent plays no role in the application of the doctrine of equivalents, the defense of "experimental use" is not "inescapably" an intent inquiry and that the defense persists, "albeit in the very narrow form articulated by this court in Embrex. …" The Federal Circuit further explained that experimental use is not necessarily an affirmative defense and need be raised as such, i.e., in the answer to the complaint, in order to be preserved. Finally, the Court noted that the accused infringer must establish the defense, if available.
In this case, the Federal Circuit reversed the district court’s grant of summary judgment that Duke University’s use of the patented technology was experimental, holding that "regardless of whether a particular institution or entity is engaged in an endeavor for commercial gain, so long as the act is in furtherance of the alleged infringer’s legitimate business and is not solely for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry, the act does not qualify for the very narrow and strictly limited experimental use defense. Moreover, the profit or nonprofit status of the user is not determinative."
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