The University of Utah (UUtah) sued the assignees of two patents, which included the University of Massachusetts (UMass), to correct inventorship. UMass argued that the Supreme Court had original jurisdiction because the dispute was between two states. In response, UUtah amended its complaint, substituting four UMass officials for the university. The named official defendants moved to dismiss the case because the Supreme Court had original jurisdiction, UUtah’s claims were barred by sovereign immunity, and UUtah failed to join UMass as an indispensable party. The district court denied the motion, and the named official defendants appealed.
The Federal Circuit affirmed the district court’s decision. First, applying Second Circuit caselaw, the Court held that UMass was not a real party in interest because, simply, “a state has no core sovereign interest in inventorship.” A person invents, not a state. Moreover, an order granting relief and requiring the PTO to correct inventorship can be issued without UMass, and will not compel or restrain UMass from acting, deplete the state treasury, or instruct UMass how to conform to state law. Second, the Court ruled that sovereign immunity did not apply because the suit was not one by citizens against a state. Third, the Court ruled that UMass was not an indispensable party. There is no per se rule that patent owners are indispensable parties. The district court must conduct the proper and full Rule 19 analysis. The Federal Circuit found that the district court correctly held that UMass’s interests were adequately represented by the named official defendants, that UMass would not be prejudiced, and that an order directing the PTO to correct ownership would not be insufficient without UMass.
A copy of the case can be found here.