Case: University of Utah v. Max-Planck-Gesellschaft Zur Foerderung Der Wissenschaften E.V., Nos. 2012-1540, -1541, -1661 (Fed. Cir. Aug. 19, 2013) (precedential). On appeal from D. Mass. Before Moore, Reyna, and Wallach.

Procedural Posture: Plaintiff University of Utah sued to correct patent inventorship. In an amended complaint, plaintiff named University of Massachusetts (“UMass”) officials in lieu of UMass. The officials moved to dismiss, asserting the claims were barred by sovereign immunity and for failure to join the indispensable party, UMass. District court denied motion to dismiss. CAFC affirmed.

  • Subject Matter Jurisdiction: The Supreme Court has original and exclusive jurisdiction in disputes between states under 28 U.S.C. § 1251(a) only where a state is a real and substantial party in interest, i.e., where it is a mandatory or indispensable party. CAFC affirmed the district court’s findings that UMass, as an arm of the state, is not an indispensable party because any order to correct inventorship would not operate directly against it and adequate relief could be granted without it. Further, CAFC found that neither inventorship nor ownership of a patent is a core sovereign interest. Accordingly, UMass was not a real party in interest and the Supreme Court did not have original and exclusive jurisdiction over the case. Separately, the action was not a suit by citizens against a state, and sovereign immunity is therefore not at issue.
  • Failure to Join an Indispensable Party (Fed. R. Civ. P. 19): The CAFC had pendent jurisdiction because, under First Circuit law, joinder of a Rule 19 indispensible party cannot be waived, and the issue can be raised for the first time on appeal. CAFC determined that UMass’s interests were adequately represented by the named defendants (all other co-owners of the patents) and by their joint legal counsel. CAFC also determined that relief could be granted without UMass being a named defendant because any order correcting inventorship would be binding on the USPTO. Finally, CAFC agreed with the district court that while another forum (i.e., the Supreme Court) is potentially available should UMass be joined, the Supreme Court might not accept the case. For these reasons, CAFC affirmed the district court’s decision that UMass was not an indispensable party under Rule 19.

Moore, dissent:

  • Subject Matter Jurisdiction: The majority incorrectly found that this action was not a suit between states. The Supreme Court has original and exclusive jurisdiction over this case because UMass, and not the named defendant UMass officials, has a real interest in the action. UMass’s ability to act and its property interest will be negatively impacted by an order to correct inventorship. Whether the Supreme Court may or may not elect to hear the case is not pertinent to the issue of jurisdiction. Accordingly, the Supreme Court has original jurisdiction over this dispute.
  • Failure to Join an Indispensable Party (Fed. R. Civ. P. 19): Just as a patent owner is an indispensable party in declaratory judgment actions regarding invalidity and infringement, all co-owners should be joined in an action affecting their patent. In this instance, UMass does not have interests identical to any other defendant, and therefore no party can adequately represent its interests. The majority incorrectly found that UMass is not an indispensible party.