The U.S. Court of Appeals for the Federal Circuit has ruled that sovereign immunity prevents a researcher from pursuing his claim of co-inventorship against a state research institution that owns the patents. The case, Ali v. Carnegie Institution of Washington, No. 2016-2320, per curiam, (Fed. Cir. April 12, 2017), holds some noteworthy lessons for state-affiliated research institutions.
Dr. Andrew Z. Fire of the Carnegie Institution of Washington and Dr. Craig C. Mello of the University of Massachusetts were awarded the 2006 Nobel Prize in Medicine for their work in discovering a fundamental mechanism for controlling the flow of genetic information. Mussa Ali worked in Mello’s University of Massachusetts lab and claimed to have made a critical contribution to the inventions in 1997. He brought suit against the patent owners in federal district court, seeking to be added to the patents as a named co-inventor, as well as a share in royalties.
As a state institution, UMass benefits from sovereign immunity against suits in federal court under the Eleventh Amendment to the Constitution. The Oregon district court ruled that sovereign immunity required the dismissal of UMass from the proceeding. After the case was transferred to Washington, the D.C. district court ruled that the case could not proceed against the Carnegie Institution either, because UMass is an indispensable party under Federal Rule of Civil Procedure 19(b). In a per curiam opinion, the Federal Circuit affirmed the rulings of the two lower courts. In so doing, the appellate court rejected an argument that the Bayh-Dole Act requires state institutions to waive sovereign immunity as a condition of federal research funding.
The decision will be welcomed by state-affiliated institutions because it means that inventorship disputes among their researchers do not generally risk becoming court cases. However, a concurring opinion leaves the door open to a different result if a plaintiff seeks only an injunction, without monetary relief, in federal court.