University of Utah v. Max-Planck et al.


Docket No. 2016-1336

O’MALLEY, REYNA, WALLACH
March 23, 2017

Brief Summary: DC finding that this case was not “exceptional” under § 285 and thus denying Max-Planck’s motion for attorney fees of about $8 million affirmed since there is no “precise Octane Fitness framework”. While the DC agreed the case “was weak and based on insufficient evidentiary support, it properly provided a detailed explanation as to why it disagreed”.

Summary: Max Planck appealed DC finding that this case was not “exceptional” under § 285 and thus denied it’s motion for attorney fees of about $8 million. The dispute is centered upon the ten RNA interference (RNAi) Tuschl II patents owned by Max Planck and whether Utah’s Dr. Bass should be named as a sole or joint inventor on those patents. In a Cell mini-review published before the application that led to the Tuschl II patents was filed, Utah’s Dr. Bass hypothesized about “3’ overhangs” on dsRNA. According to the opinion, Dr. Tuschl recognized this hypothesis may be relevant to RNAi, and later successfully produced and tested constructs including 3’ overhangs. Max Planck then filed a patent application that led to the Tuschl II patents. Dr. Bass’ mini-review was cited as prior art during prosecution of the Tuschl II patents. Utah argued that Dr. Bass was an inventor based on her Cell mini-review and “alleged collaboration between [her] and the Tuschl II inventors that occurred over several conversations at various academic conferences.” Max Planck moved to dismiss the complaint the DC found Utah “sufficiently alleged the facts necessary to” state its claims and the case proceeded to discovery. “During her deposition, Dr. Bass made several admissions undermining UUtah’s allegation that [she] reduced the Tuschl II invention to practice”, including statements that she did not do “any of the experiments or generate[d] any of the data” of the patents and her lab never “studied how to put siRNAs on cells and make them work”. Dr. Bass had also acted as a journal referee regarding publications of the Tuschl II data and “was asked whether she suggested to anyone that she was not being properly credited as the discoverer of the 3’ overhangs” to which “she responded: ‘I don’t think it would have ever crossed my mind to say that.’” Utah withdrew its sole inventorship claims with prejudice “[o]n the eve of the deadline for dispositive motions” in the DC. The DC “reasoned there was no evidence to support a finding of collaboration” or that joint inventorship had been established. Max Planck then argued the case was “exceptional” under § 285 because UTah “lacked any meaningful basis for filing its” suit “in light of Dr. Bass’ testimony”, Utah’s “delay in withdrawing it sole inventorship claim until the even of [SJ] indicates [it] knew its claim was meritless”, and Utah’s “claimed damages were extorionately high.” The DC disagreed “when all reasonable inferences were drawn” in Utah’s favor and “its inventorship claim was predicated on a valid interpretation of Kimberly-Clark” (FC 1992 (“one inventor seeing a relevant report and building upon it might be an element of joint behavior supporting collaboration”)), although it acknowledged the “sole inventorship argument had little factual support” (and crediting Utah for withdrawing that claim). The FC panel explained it reviews § 285 decisions for an abuse of discretion (“clearly erroneous assessment of the evidence” (Highmark, US 2014; Insite Vision, FC 2015). In the appeal, Max-Planck argued the DC disregarded Octane Fitness (US 2014). The FC panel explained that “there is ‘no precise rule or formula for making these determinations’” (there is no “precise Octane Fitness framework”). It noted that while the DC agreed the case “was weak and based on insufficient evidentiary support, it provided a detailed explanation as to why it disagreed” with Max-Planck, and “[t]he trial judge was in the best position to understand and weigh [the] issues” with “no obligation to…reveal[] her assessement of every consideration.” The DC decision was therefore affirmed.

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