A patent dispute between the University of Massachusetts and the University of Utah isn’t subject to the U.S. Supreme Court’s exclusive jurisdiction in disputes between states, a divided U.S. Court of Appeals for the Federal Circuit has ruled.
“Because UMass is not a real party in interest under the Supreme Court’s case law, we hold that this is not a conflict between States subject to the Court’s exclusive original jurisdiction,” the court declared on Monday, in an opinion by Judge Jimmie Reyna.
Moreover, under the U.S. Patent Code, “a State has no core sovereign interest in inventorship” because inventors are one or more individuals, he said, joined by judge Evan Wallach.
The ruling allows University of Utah v. Max-Planck-Gesellschaft to proceed in trial court.
In a dissent, Judge Kimberly Moore insisted that UMass is the real party in interest, because a judgment in Utah’s favor would bar UMass from licensing or assigning the patents or practicing the inventions. “UUtah initiated an action that seeks to obtain UMass’s interest in the Tuschl II patents. That is a controversy between two States and can only be brought in the Supreme Court,” she wrote.
The majority ruling affirmed District of Massachusetts Chief Judge Patti Saris’s June 2012 denial of University of Massachusetts’ dismissal motion. The dispute centers on the inventorship of the two patents on methods for preparing a type of RNA molecule that can silence genes.
UMass was originally named as a defendant, but the University of Utah substituted the names of four UMass officials after that school raised the jurisdictional rule in an early dismissal motion. The complaint also names several assignees of the patents—The Max Planck Society, Max-Planck-Innovation GmbH, the Whitehead Institute for Biomedical Research, the Massachusetts Institute of Technology and Alnylam Pharmaceutical Inc.
The move didn’t impress Moore. “UUtah cannot recast the nature of this dispute by suing the UMass Officials as stand-ins for UMass,” she wrote.
In an email, Steve Berman, managing partner of Seattle’s Hagens Berman Sobol Shapiro and one of UUtah’s lawyers, said the team was “pleased to get past this procedural hurdle. We think the Federal Circuit saw what the defendants were really trying to do: have the case sent to the Supreme Court with the hopes the justices would not want to try a patent case and would decline jurisdiction, thus leaving the University of Utah with no forum at all.” Mark Carlson, a Seattle of counsel at Hagens Berman, argued for UUtah.
The defendants’ lawyers at Irell & Manella in Los Angeles were not available or did not respond to requests for comment. Partner David Gindler argued for the defendants.
UMass spokeswoman Ann Scales said the school was “in the process of reviewing the ruling, and will have no further comment at this time.”
Alnylam and Whitehead, which is an MIT affiliate, declined to comment. Officials with the Max Planck Society could not be immediately reached for comment.
Sheri Qualters can be contacted at firstname.lastname@example.org.