Background
Dr. Monib Zirvi, a Cornell-trained scientist, co-invented “ZipCode” DNA sequencing technology in the 1990s while at Cornell University. As required by his employment, Zirvi assigned his patent rights to Cornell, which then exclusively licensed the technology to Thermo Fisher Scientific. Zirvi retained a royalty interest in any recoveries.
When Cornell and Thermo Fisher sued Illumina Inc. for infringing the ZipCode patents, attorneys from Akin Gump Strauss Hauer & Feld represented the plaintiffs. Zirvi alleges the lawyers told him his interests were “aligned” with theirs and that they “represented his interests.” He spent hundreds of hours preparing confidential technical analysis at their request but had no role in settlement negotiations. The case settled with Illumina in 2017.
Zirvi later filed a malpractice suit in 2023, alleging that the Akin Gump attorneys had knowledge of key evidence they did not use and failed to properly counsel him on his rights to patent attribution and royalties. The District of New Jersey dismissed the suit in April 2024, and the Third Circuit affirmed in October 2024, finding that Zirvi was in privity with Cornell for claim preclusion purposes but was not owed an attorney-client duty.
The Court’s Holding
The Supreme Court denied certiorari on April 20, 2026, declining to review the Third Circuit’s decision. No justices noted a dissent.
The case highlighted what patent law commentators have called the “privity without duty” problem: the doctrine of claim preclusion can bind an inventor to the outcomes of patent litigation — including settlements that may undervalue the inventor’s contributions — while courts simultaneously hold that no attorney had a duty to protect the inventor’s interests during that same litigation.
Key Takeaways
- Patent inventors who assign rights to employers or licensees can be bound by litigation outcomes through claim preclusion, even when they had no control over settlement decisions.
- Being told your interests are “aligned” with the patent holder’s counsel and providing extensive technical assistance does not automatically create an attorney-client relationship with that counsel.
- The structural gap remains: inventors have no guaranteed right to independent representation in infringement litigation brought by their assignees, yet face preclusion from challenging the results.
- Inventors retaining royalty interests should consider negotiating contractual rights to approve settlements or to retain independent counsel at the licensee’s expense.
Why It Matters
This case matters to any scientist, engineer, or employee-inventor who has assigned patent rights while retaining a financial stake. The ZipCode scenario is common in university and corporate settings: an inventor assigns rights, retains a royalty interest, cooperates extensively with litigation counsel, and then discovers the case was settled on terms that may not reflect the patent’s full value.
The Court’s refusal to intervene leaves intact a framework where inventors occupy a legal no-man’s-land — bound by preclusion but owed no duty. For patent practitioners, the lesson is practical: inventors should be advised at the outset about the limits of their relationship with assignee’s counsel, and where possible, formal engagement letters or contractual protections should define the inventor’s rights during litigation.