Supreme Court of the United States
Supreme Court of the United States (Diego M. Radzinschi / The National Law Journal)

A patent dispute between two state universities may be headed to the U.S. Supreme Court.

If the Supreme Court grants cert, it would add to a record patent docket for the high court, which has already taken up six cases this term. But lawyers for the University of Massachusetts argue that’s where the case should have been all along.

The University of Utah sued the University of Massachusetts in 2011 over the ownership of a family of “gene silencing” patents. Before reaching the merits of the suit however, a procedural battle broke out over which court has jurisdiction in the case.

The University of Utah filed suit against UMass in U.S. District Court in Massachusetts. UMass moved to dismiss the complaint, arguing that Article III of the Constitution grants the Supreme Court with “original and exclusive jurisdiction over all controversies between two or more states.” Since both schools are instrumentalities of their respective states, this case should qualify, the argument went.

Utah responded with an amended complaint, dropping UMass as a defendant, but adding school representatives instead. Utah then argued the case did not implicate a “core sovereign interest” and qualified for an exception to Article III created by the U.S. Court of Appeals for the Second Circuit.

The Massachusetts district judge agreed that a patent dispute was not a “core sovereign interest” akin to a border or trade dispute, and denied UMass’s motion to dismiss. The Federal Circuit affirmed in a split decision. The dissenting opinion echoed the dissent from the previous Second Circuit case creating the Article III exception, which was written by current Supreme Court Justice Sonia Sotomayor.

In Connecticut ex. rel. Blumenthal v. Cahill, Judge Sotomayor wrote that, “there is nothing in the language of the statute (28 U.S.C. § 1251(a); codifying Art. III, § 2, cl. 2), its legislative history, or Supreme Court case law stating that the Supreme Court’s exclusive jurisdiction over [controversies between states] may be concurrent with lower federal courts depending upon the nature of the interstate dispute.”

Irell & Manella partners Morgan Chu, David I. Gindler, and Alan J. Heinrich filed the petition for a writ of certiorari for UMass. A response brief is due next month.

“The Court’s exclusive jurisdiction over controversies between States has never been called into question either by this Court or by Congress since the creation of the federal judiciary itself,” the Irell team wrote in its brief. “Nevertheless, that exclusivity has recently been encroached upon by the Seond Circuit and, now, the Federal Circuit.”

The case is Caret v. The University of Utah.