University of Utah v. Max-Plank-Gesellschaft et al.


Docket No. 2012-1540, -1541, -1661

Moore(D), Reyna, Wallach
August 19, 2013

Brief summary: UUtah successfully argued that its inventorship suit against UMass officials was not a dispute falling within the exclusive jurisdiction of the Supreme Court.

Summary: The University of Utah (UUtah) brought suit against Max-Planck et al. (Whitehead Institute, Alnylam Pharm., Univ. Mass.) to correct the inventorship of U.S. Pat. Nos. 7,056,704 and 7,078,196 (“Tuschl Patents”) relating to RNA interference. Dr. Brenda Bass is employed by UUtah and Dr. Thomas Tuschl is employed by UMass. The two had attended professional conferences and were familiar with each other’s work. Dr. Bass alleged that the Tuschl Patents (which do not name Dr. Bass as an inventor) “disclosed and claimed [her] conception.” UUtah believes Dr. Bass is the sole inventor of the Tuschl patents but UMass refused to cooperate in correcting the inventorship. UUtah then filed suit in DC requesting correction of inventorship and asserting various state law claims against the non-state defendants. UMass argued that because UUtah and itself were arms of the state, the dispute fell within the exclusive jurisdiction of the Supreme Court. UUtah then amended the complaint to remove UMass and name four UMass officials to avoid Supreme Court jurisdiction. The DC agreed with UUtah and concluded that “correction of inventorship was not a core sovereign interest sufficient to make this a dispute between the States.” The opinion begins by explaining that state universities “typically enjoy[] sovereign immunity [and] generally may not be sued for infringement [or] forced to defend against” a DJ action of invalidity or non-infringement (A123 Sys., FC 2010), but that “States do not enjoy sovereign immunity from suits brought by other States” (Texas v. New Mexico, US 1984) and “States are free to sue citizens of other States without raising sovereign immunity issues.” The FC panel agreed with the DC because, in part, “with respect to UMass, only inventorship is at issue” and “a State has no core sovereign interest in inventorship…because States cannot be inventors” (only individuals can be inventors; “State ownership of patent rights is not akin to State ownership of water rights…or other property issues that ‘implicate serious and important concerns of federalism’ and rise to the level of core sovereign interests”). It also concluded that UMass was “not a real party in interest”, not “indispensable” (Rule 19), and not a “‘mandatory’ party”. Sovereign immunity was found not to be relevant here because “this case does not involve a suit by citizens against a State”. Thus, the DC decision was affirmed. Judge Moore’s dissent disagreed that the dispute was between UUtah and the UMass officials and argued that the decision was incorrect because the actual dispute was between UUtah and UMass (e.g., “[a] judgment in UUtah’s favor will restrain UMass’s ability to act”).

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