University of Utah v. Max-Planck-Gesellschaft Zur Forderung Der Weissenschaften E.V., et al.
Addressing issues of sovereign immunity and original jurisdiction, the U.S. Court of Appeals for the Federal Circuit upheld the determination that a case between one state university and employees of another state university was not a dispute between states subject to the Supreme Court of the United States’ exclusive jurisdiction. University of Utah v. Max-Planck-Gesellschaft Zur Forderung Der Weissenschaften E.V., et al., Case Nos. 12-1540, -1541, -1661 (Fed. Cir. Aug. 19, 2013) (Reyna, J.) (Moore, J., dissenting).
Dr. Brenda Bass, a professor of biochemistry at the University of Utah (UUtah), focuses her research on RNA interference, a phenomenon in which RNA is involved in silencing expression of individual genes. Dr. Thomas Tuschl is a University of Massachusetts (UMass) researcher active in RNA interference research. Drs. Bass and Tuschl were familiar with each other’s work, and each presented papers at professional conferences attended by the other. Dr. Tuschl was granted patents related to his work. He assigned these patents to UMass. UUtah, the potential assignee of Dr. Bass’ rights, believed that the Tuschl patents “disclosed and claimed [her] conception,” yet failed to name her as an inventor. UUtah asked defendants to cooperate in a petition to correct inventorship. Defendants refused. UUtah sued in district court, naming UMass as a defendant. UMass sought dismissal, arguing that the Supreme Court had exclusive original jurisdiction. UUtah responded by amending its complaint to replace UMass with four UMass officials. The UMass officials moved to dismiss, arguing that UMass (as the named defendant) was the real party in interest and the case was subject to the exclusive jurisdiction of the Supreme Court. The defendants also claimed sovereign immunity. The district court denied the motion, holding that the requested relief was prospective in nature and that moreover UUtah had elected to sue the officials, not the state itself. It also reasoned that the inventorship case was not a “core sovereign interest sufficient to make this a dispute between States.” UUtah appealed.
On appeal, the Federal Circuit noted that the appropriateness of original (Supreme Court) jurisdiction depends upon “the seriousness and dignity of the claim,” whether the “named parties” have another forum where relief may be had, and whether the case raises “serious and important federalism concerns.” The Federal Circuit held that UUtah, in amending its complaint, decided to only bring a case against citizens of another state, not UMass. The Federal Circuit went on to find that UMass was not a real party in interest, because the district court could grant UUtah the relief it sought by simply directing the U.S. Patent and Trademark Office to correct the inventorship of the Tuschl patents. As such, there was no dispute between states and no exclusive jurisdiction. Because UMass is not a party in the case or the real party in interest, the court similarly rejected the argument that the individually named defendants were entitled to immunity under the 11th Amendment. Lastly, the Federal Circuit found that UMass’ interests were adequately protected by the named defendants—which included all the other owners of the Tuschl patents—and ruled that UMass was not an indispensable party under FRCP 19. The Federal Circuit acknowledged that the Rule 19 inquiry is fact intensive and that it was possible that the facts may change on remand, making UMass indispensable; however, that was best resolved by the district court.