Stanford retains cancer detection patents licensed to Foresight Diagnostics, but Roche gets non-exclusive license: settlement

Context: At this point, ip fray does not report on trade secret matters per se, but this is now a case where trade secret questions were key to a patent ownership dispute. Last year, Roche Molecular Systems and Roche Sequencing Solutions filed a lawsuit in the Northern District of California against Stanford spinoff Foresight Diagnostics, Stanford professor David Kurtz and the Board of Trustees of Stanford University, alleging the violation of trade secret, contract and unfair competition law in connection with patent applications on cancer detection techniques. Roche argued that its 2015 acquisition of an earlier Stanford spinoff, Capp Medical (CappMed), and its CAPP-Seq technology, which analyzes circulating tumor DNA (ctDNA) for cancer detection, made Roche (not Stanford) the actual owner of certain disputed patent applications (DPAs). Stanford, however, granted an exclusive license to those patents to another Stanford spinoff, Foresight Diagnostics. At that point, the disputed technique was called PhasED-Seq.

What’s new: On Tuesday (September 2, 2025), Judge Eumi K. Lee of the United States District Court for the Northern District of California, who had previously stayed the case, granted a stipulation to dismiss the case as the result of a settlement. Previously, the defendants had sought the dismissal not only of Roche’s original but also its amended complaint, but succeeded only to a limited extent. Roche’s claim for declaratory judgment that it was the lawful owner of the disputed patent applications survived the motion to dismiss for reasons discussed further below.

Direct impact: The upshot, according to Foresight’s August 29, 2025 press release, is that “[i]ntellectual property rights in the PhasED-Seq technology remain with Stanford University, with Foresight continuing to hold the exclusive license to the patents for all uses and geographies,” but “Foresight has granted Roche a limited royalty-bearing non-exclusive sublicense under certain patents for use of PhasED-Seq for the development of in vitro diagnostic (IVD) kits for Non-Hodgkin’s Lymphoma (NHL).” This outcome suggests that Roche achieved something of significant commercial value, even if not the exclusive ownership it claimed to be entitled to.

Wider ramifications: Interestingly, this was not the first time for a particular wording in a patent assignment agreement to be at issue between Roche and the university, where the question even reached the Federal Circuit. But as Judge Lee declined to throw out the declaratory-judgment claim at this stage and the parties settled not long thereafter, there will be no further judicial clarification this time around. The fact that Stanford retains the patents suggests that its present assignment language works pretty well.