Federal Circuit Rejects Supreme Court Original and Exclusive Jurisdiction over State-vs-State Inventorship Disputes

By Dennis Crouch

A highlight of this opinion is Footnote 1 of Judge Moore’s dissenting opinion that states “The majority baldly asserts that issues of patent ownership and inventorship are not sufficiently grand for the Supreme Court to resolve in the first instance. That is not our decision to make. It is for the Supreme Court to itself decide.”

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University of Utah v. Max-Planck-Gesellschaft (Fed. Cir. 2013)

In 2011, University of Utah (UUtah) filed a federal lawsuit under 35 U.S.C. § 256 to correct the inventorship of U.S. Patent No 7,078,196. That patent is directed to Small Interfering RNAs (siRNAs) and methods of creating those molecules that are the current study of intensive genetic therapy research.

According to USPTO records, the patent is owned collectively by the Max-Planck Institute as well as MIT, the Whitehead Institute and the University of Massachusetts. Dr. Brenda Bass – a UUtah professor – alleges that Dr. Thomas Tuschl – a UMass Professor – incorporated her ideas into his patent but then did not name her as an inventor. All of these assignees were named as defendants in the complaint filed in Federal District Court.

The appeal raises interesting issues of civil procedure, federalism, and sovereign immunity. The 11th Amendment to the U.S. Constitution generally provides sovereign immunity to state governments from any cause of action in Federal Court brought by citizens of another state or country. However, the 11th Amendment does not provide for immunity in state-vs-state actions. Rather, the U.S. Constitution provides that “In all [Federal] Cases . . . in which a State shall be Party, the supreme Court shall have original Jurisdiction.” Art III, §2, cl. 2. Following the constitutional guidance, the jurisdictional statutory code provides that the “Supreme Court shall have original and exclusive jurisdiction of all controversies between two or more States.”

Rather than fighting the battle in District Court, UMass (a state institution) argued that the case brought by UUtah (another state institution) should be seen as a state-vs-state conflict that should go directly to the Supreme Court in the matter of first instance.

In order to avoid that result (but still reach the same result), UUtah dropped UMass as a defendant and instead list the leaders of UMass (including its president Robert Caret) as the defendants. Based upon that change, District Court Judge Saris held that the case should no longer be seen as a state-vs-state case and that, as a consequence, the Supreme Court did not have exclusive original jurisdiction. Judge Saris also found that correction of inventorship was not a “core sovereign interest sufficient to make this a dispute between States,” but that the case could proceed against the named officials under the Ex parte Young doctrine. Particular to this case is that the remedy demanded was an order directing the USPTO to correct inventorship rather than calling for any monetary or injunctive relief against the state.

Although the district court case is not final, the Federal Circuit took an immediate appeal under the Collateral Order Doctrine.

On appeal, the Federal Circuit has affirmed – finding that “UMass is not a real party in interest under the Supreme Court’s caselaw.” Although both the Constitution and Statute appear clear, the US Supreme Court has been reluctant to take cases such as this and has thus added requirements that the case be “serious,” “dignified,” and raising “important” federalism concerns. In addition, the Supreme Court has considered whether there are other avenues for relief. And, both of the competing states must be indispensable parties to the lawsuit.

On this notion, UMass argues that UUtah is seeking the property of UMass (i.e., its patent) and that is sufficient to make UMass a real party that cannot be “plead around.”

Agreeing with UMass, the Federal Circuit instead held that the case is about “inventorship” and the identity of the individual inventor of a patent is not a “core sovereign interest” that need be raised directly to the Supreme Court. In addition, the Federal Circuit agreed that the formal shift from suing the University to suing the University President in his Official Capacity was sufficient to evade the state-vs-state setup. Finally, the appellate panel found that UMass (a patent owner) is not an indispensable party to the case since its interests are being adequately protected by the other co-owners and its named officials.

In reality, UUtah UMass [Updated] likely does not want the Supreme Court to directly hear the case. Rather, the strategy here is that the University is largely betting on the likelihood that the Supreme Court would decline to exercise jurisdiction – effectively ending the case.

= = = = =

Writing in Dissent, Judge Moore vigorously disagreed with the majority’s holding.

The majority erroneously holds that a patent-ownership dispute between two state universities is not a “controversy between two or more States.” It then compounds this error and holds that a patent owner is not an indispensable party to an action that seeks to reassign title to the patents-in-suit. I respectfully dissent.

I. Subject Matter Jurisdiction

The district court lacks jurisdiction over UUtah’s claims against the UMass Officials because those claims raise a dispute between two States, Utah and Massachusetts. Article III of the U.S. Constitution vests the Supreme Court with original jurisdiction over cases in which a State is a party. As § 1251(a) expressly states: “The Supreme Court shall have original and exclusive jurisdiction of all controversies between two or more States.” There is no dispute that UUtah and UMass are instruments of Utah and Massachusetts, respectively, and that a suit between those institutions could only be brought in the Supreme Court. The majority, however, concludes that § 1251(a) does not apply here because UUtah elected to sue the UMass Officials rather than UMass. That conclusion is incorrect.

To determine if a suit implicates the Supreme Court’s exclusive original jurisdiction, we look “behind and beyond the legal form” of the claim and determine “whether the State is indeed the real party in interest.” Arkansas v. Texas, 346 U.S. at 371. The majority agrees with this general proposition but holds that the UMass Officials, not UMass, are the real parties in interest. I disagree.

This case involves a dispute between UMass and UUtah over who owns the rights to the Tuschl II patents. UMass is the assignee of the Tuschl II patents and UUtah “wants to own the patents.” UUtah is pursuing that interest through a correction of inventorship claim under 35 U.S.C. § 256 and a corresponding request for an order that UUtah owns the patents. … UUtah also alleges in its complaint that it “should be the sole owner or an owner” of the Tuschl II patents. It specifically requests that the court “order assignment of all right title and interest” in the patents to UUtah. Indeed, the majority recognizes (1) that UUtah specifically requested that the court assign it all rights to the Tuschl II patents and (2) that UUtah will obtain the rights to the patents if it prevails on its correction of inventorship claims. This is a dispute about ownership, plain and simple.

UUtah cannot recast the nature of this dispute by suing the UMass Officials as stand-ins for UMass. Indeed, the majority never holds that the UMass Officials have any interest in this proceeding. Nowhere does the majority suggest that the UMass Officials are “parties concerned” that may be subject to a correction of inventorship action under § 256(b). . . .

Section 1251(a) contains “uncompromising language”: the Supreme Court has original and exclusive jurisdiction over “all controversies between two or more States.” Mississippi v. Louisiana, 506 U.S. 73, 77, 113 S.Ct. 549, 121 L.Ed.2d 466 (1992). The majority errs when it concludes that § 1251(a) does not apply to this dispute because the “State has no core sovereign interest” in inventorship or patent ownership. Maj. Op. at 13–15. The majority’s “core sovereign interests” test is at odds with the plain language of the statute, which contemplates “all controversies” between states fall within 1251, not just those involving core sovereign interests. There is simply no basis to limit the statute in such a way.

Moreover, requiring a core sovereign interest to implicate the Supreme Court’s exclusive jurisdiction erodes the Court’s discretion to decide which controversies it will hear. The existence of the Supreme Court’s exclusive jurisdiction and its discretion to exercise that jurisdiction are separate concepts. The Court’s exclusive original jurisdiction extends to “all controversies between two or more States.” 28 U.S.C. § 1251(a). The Court, however, is not required to exercise its jurisdiction over every controversy. The Court tends to exercise its jurisdiction sparingly, depending upon the nature of the interest of the complaining State, the seriousness and dignity of the claim, and the availability of another original forum to resolve the dispute. Mississippi v. Louisiana, 506 U.S. at 76–77. The concept of a “core sovereign interest” has roots in opinions that address whether the Supreme Court will decide to exercise its jurisdiction over a dispute, not whether the Court’s exclusive original jurisdiction over the controversy exists. See id. at 77; Texas v. New Mexico, 462 U.S. 554, 570, 571 n. 18, 103 S.Ct. 2558, 77 L.Ed.2d 1 (1983); Connecticut ex rel. Blumenthal v. Cahill, 217 F.3d 93, 109 (2d Cir.2000) (collecting cases). The majority’s conflation of those two concepts strips the Supreme Court of its discretion to decide if a case is sufficiently serious to exercise jurisdiction over it. It reallocates that power to the lower courts—who will decide which subset of cases—those implicating core sovereign interest—will be presented to the Supreme Court. FN1

The majority finds support for its decision in the Second Circuit’s split decision in Cahill. With all due respect, even if we adopt the flawed logic of the majority in Cahill, this case would still fall within the Supreme Court’s exclusive jurisdiction in § 1251. The majority correctly recognizes that, generally, a State is the real party in interest if ” the effect of the judgment would be to restrain the Government from acting, or compel it to act.” Maj. Op. at 14 (quoting Cahill, 217 F.3d at 106). But the majority nevertheless concludes that UMass is not the real party in interest because a judgment to correct inventorship “will not require or restrain UMass from acting.” Id. at 13. This is not correct.

A judgment in UUtah’s favor will restrain UMass’s ability to act. If successful, UUtah will be declared sole owner of the Tuschl II patents and UMass will have no interest in them. UMass will not be able to license or assign the patents. And UUtah will be able to exclude UMass from practicing the inventions claimed in the patents. Patent rights are the quintessential right to restrain. The effect of this judgment will be to prevent UMass from exploiting the Tuschl II patents or the technologies they cover. This certainly “restrain[s] the Government from acting.”

UUtah alternatively requests that Dr. Bass be found to be a co-inventor. A finding that Dr. Bass is a co-inventor of the Tuschl II patents will result in UUtah co-owning those patents. The effect of the judgment would be that UUtah could practice or license the patents without UMass’s consent and without having to account to UMass. See 35 U.S.C. § 262. The judgment would thus restrain UMass from asserting its rights in the Tuschl II patents against UUtah or any of UUtah’s licensees. Again, this restrains UMass from acting.

The majority ignores these effects on UMass. Without explanation, the majority asserts that UMass will only be “more or less affected by the decision” and that transfer of the Tuschl II patents to UUtah will “not deplete the state treasury.” Maj. Op. at 15. This is incorrect. A correction of inventorship by the PTO will give UUtah an ownership interest in the Tuschl II patents by operation of law and dilute or revoke UMass’s property interest. Indeed, as the majority also recognizes, UUtah expressly asks the court to order the reassignment of the patents to UUtah. The central effect of a judgment in UUtah’s favor will be to deplete the assets of the current owners of the Tuschl II patents, one of whom is UMass. UMass is thus the real party in interest in this case.

This is a dispute between two state universities over who owns a valuable patent portfolio—a dispute over property ownership. As undesirable as it may be, we are bound to follow the plain language of § 1251(a): “The Supreme Court shall have original and exclusive jurisdiction of all controversies between two or more States.” It is up to the Supreme Court to decide if it wants to exercise its exclusive jurisdiction over this controversy. We should not contort the statute to avoid a perceived injustice FN2 that would result if the Court declined to exercise jurisdiction over UUtah’s claims.

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. Accordingly, we should reverse the district court’s decision that it had jurisdiction over UUtah’s claims against the UMass Officials.

II. Indispensable Party

The majority’s holding that UMass is not an indispensable party to this action is incorrect. We have held that when a plaintiff brings a declaratory judgment action seeking to invalidate a patent or hold it not infringed, the patentee is both a necessary and indispensable defendant in that action. A123 Sys., Inc. v. Hydro–Quebec, 626 F.3d 1213, 1217–19, 1220–22 (Fed.Cir.2010); Enzo APA & Son, Inc. v. Geapag A.G., 134 F.3d 1090, 1094 (Fed.Cir.1998). It would be nonsensical to suggest that all patent owners must be joined in a suit seeking to invalidate the patent, but they need not be joined in a suit over patent ownership. Indeed, § 256(b) requires a court, before it orders a correction of inventorship, to provide “notice and hearing of all parties concerned,” i.e., those with an “economic stake” in the patent. Chou, 254 F.3d at 1359–60. We should apply our general rule that all co-owners must be joined in an action that affects their patent. See Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1467 (Fed.Cir.1998).

The majority instead holds that UMass is not an indispensable party because UUtah joined “all of the Tuschl Patent owners except UMass,” each of whom are “jointly represented by legal counsel.” Maj. Op. at 21. It is not enough that UMass and the named defendants “share the same overarching goal” of defeating UUtah’s inventorship and ownership claims. A123 Sys., 626 F.3d at 1221 (holding that absent patentee was an indispensable party when the named party had “overlapping” but not “identical” interests).

The majority deviates from our longstanding requirement that all patent owners be joined, citing an exception created in Dainippon Screen Manufacturing Co. v. CFMT, Inc., 142 F.3d 1266 (Fed.Cir.1998). It is true that, like Dainippon Screen, the named defendants here are represented by common counsel. But the majority omits the “highly relevant” facts from Dainippon Screen—the absent party was a wholly-owned subsidiary of the named party and was created by the named party to enforce the patents-in-suit. 142 F.3d at 1267–68, 1272–73. We allowed the suit to go forward because “the parties’ interests in the asserted patents were not just common, but identical.” A123 Sys., 626 F.3d at 1221 (discussing Dainippoin Screen ).

There is no party in this suit which represents UMass’s interest in the Tuschl II patents. Other defendants also have an interest in the patents, but they do not represent UMass’s interest. Indeed, their interests may well diverge. For example, the non-UMass defendants may choose to settle with UUtah in a way that diminishes UMass’s rights, such as stipulating that Dr. Bass is the sole inventor of the Tuschl II patents in exchange for ownership interests in the patents. That risks extinguishing UMass’s rights to the patents without UMass participating in the lawsuit.

The majority further claims that defendant Alnylam can represent UMass’s interest because UMass “handed sole and exclusive control of this suit over to Alnylam.” Maj. Op. at 21. That right, however, is conditional. If there is a conflict of interest, Alnylam loses its right to control UMass’s defense. Id. The agreement thus contemplates that Alnylam and UMass may not have identical interests. Because UMass does not have identical interests with any of the named defendants, it is an indispensable party in this case. I dissent from the majority’s contrary holding.

56 thoughts on “Federal Circuit Rejects Supreme Court Original and Exclusive Jurisdiction over State-vs-State Inventorship Disputes

  1. One might also think that if the Supreme Court would more readily accept important cases where states are involved, that South Carolina and its allies might have been persuaded in 1860 to litigate its grievances, and perhaps is right to secede, in the Supreme Court instead of on the battlefield.

  2. Recall that 26 States sued to have Obamacare declared unconstitutional. We got opinions by District Courts and by Courts of Appeal. But I think that case could have been filed directly in the Supreme Court and perhaps should have.

    Also recall the Bush v. Gore case. A large part of the problem with the way that case came out was a lack of time to twice go through the trial court, the Florida Supreme Court and then to the US Circuit Court and to the US Supreme Court. That case, given its importance, should have been originally filed in the US Supreme Court.

  3. I will repeat the post that requires your response here for your convenience:

      anon said in reply to MM…
      recycle the same insults against the same people, twenty times a day

      LOL – nice attempted spin, Malcolm. Sure I have insulted posters, but the insults have been earned when those same posters insist on prevarications and ignoring of valid points made that run counter to their precious agendas.

      I have also explained how to stop this: be intellectually honest.
      Stop the spinning.
      Stop the strawmanning.
      Stop the half-truths.
      Stop the soapboxing that ignores valid points.
      Stop the misstatements of fact, law and what others post.

      We both know that if you were to actually stop your decrepit poor blogging, and stick to substantive matters, that your agenda seeking days would be over.

      Tell me again what is the controlling law when it comes to the exceptions to the printed matter doctrine.

      Tell me again about ‘configured to’ being structural language.

      Tell me again about ANTHROPOMORPHICATION.

      Tell me again how perfectly patent eligible claims can have elements that involve [thoughts] – be it [new thoughts] or even [old thoughts].

      Tell me again how perfectly patent eligible claims can have ALL elements be [old steps].

      Tell me again how you threw your own pet theory onto a bonfire of your own making when you attempted for the first time to provide a substantive squaring of the Prometheus case with the case most on point.

      Tell me again about the ‘worst thing EVAH’ scourge of svckies as you parade a seemingly endless supply of them yourself, and then point blank 1ie about it.

      Tell me who is the one that is fixated on perversity of a s3xual nature.

      Tell me who is the one that has openly insulted first time posters who happen to be cancer survivors, grieving sons of recently departed fathers, dead presidents, and people who do not even post here.

      Tell me again who was right in the Myriad case and why that person was right.

      Your audience awaits your ‘stunning mastery’ of English as a first language. As usual, the expectations are low that you will actually engage in a manner that displays intellectual honesty.

    Still waiting for you to embrace intellectual honesty. We both know that when you do, your anti-patent agenda spinning and dissembling days are over. But look at the bright side. You won’t have to go around with your own CRP in your nose anymore.

  4. Lots of easy questions – but my list of questions was put to you first.

    Let’s see you give answers to those.

  5. Martin Snyder, who are you?

    Oh wait – I goggled you and found this: link to ipwatchdog.com

    LOL – the captial A Anon racked you over the coals and you come QQ ing here.

    You do realize that almost everyone here uses a synonym, right Martin?

    Come back when you have a clue about patent law or life or whatever.

  6. Adding: I’m not saying that I agree with the reasoning in all those cases (never a big fan of the current interpretation of the 11th amendment, for that matter). But the Supreme Court has arguably “made it’s bed” with respect to its view of the relationship between a State and its university system (and other “arms” and non-arms of the state, as well). Being the Supreme Court, of course, it’s never 100% certain that they’ll sleep comfortably in that bed forever.

  7. The uni’s are not the states. Period. I can’t remember if it was the supremes that expressely stated they do get such immunity or if it was a lower court or what, but they certainly should not be.

    Only states and arms of the state have sovereign immunity. link to en.wikipedia.org

    Cities and municipalities are not “arms of the state”. link to supreme.justia.com

    A state’s university system is an arm of the state: Lapides v. Board of Regents of University System of Georgia, 122 S. Ct. 1640 (2002).

  8. “Anon is a coward; he has no brave dissent that requires his identity to be hidden”

    He has an interest in the patent system, he either is (I cannot find any patents with his name on them as of yet) an inventor in the non-useful arts, or else he is a prospective inventor in the non-useful arts now that he has thrown off his corporate masters.

  9. Lulz, from the article,

    “A UC spokeswoman says the university has a separate legal existence from the state,”

    Then no shield for you!

  10. 6, I tend to agree.  But the caselaw that says that U’s like the UMass are entities of the state are the problem.  One needs to point out, I think, that the two line of cases are not incompatible.

     
     
     

  11. Truth is not ‘smear’

    Is it “true” that I’ve never answer your inane questions? Is it “true” that I “voluntarily admitted” that “configured to” is structural in all cases, including software? Is it “true” that you “destroyed” my “theory” that [oldstep]+[newthought] claims are ineligible under 101? Is it “true” that in the wake of the Prometheus decision I “shot myself in the foot” by posting a link to the PTO guidelines? Is it “true” that your relentlss insulting s0ckpuppetry here for years is in any way equivalent to my insulting a dead US President? Or that such behavior is remotely justified by my opinion (or anybody’s opinion) that invalid patents are too easy to obtain in the United States, particularly in the computer-implemented and so-called “business” arts? Is it “true” that all people who are sympathetic to or who share my opinions about these subjects are “naive” and share an anti-patent “agenda” to destroy the entire US patent system for their own selfish reasons?

    Let everybody know.

    Then we can decide whether you are capable of determining the difference between what is “true” versus your what is just one of your bizarre fantasies about yourself, other people who are interested in patent law for any variety of reasons, and your relationship to those people.

  12. “an endless string of gratuitous insults or incomprehensible innuendo”

    So well stated.

    Anon is a coward; he has no brave dissent that requires his identity to be hidden. It’s likely hidden because his manifest sociopathology has probably made his (or her for that matter) life less than attractive here on the TeeVee.

    All there is: the noxious payload so well described.

  13. “The better question would have been whether, when patent ownership of UMass was the issue, the State of Massachusetts itself was an indispensable party. But they did not tee this question up.”

    They didn’t tee it up because it isn’t actually a very good question. The state of mass. doesn’t care one whit about this, doesn’t own the patent, didn’t invent the invention, or anything else, they’re nowhere near an indespinsible party.

    The whole shebang is nothing but a big ol’ wild red herring.

  14. ” If state universities can claim sovereign immunity under the 11th amendment in patent cases, it would seem somewhat contradictory to characterize them differently for the purpose of jurisdiction”

    Which is why I posted what I did further up the thread about it being ridiculous that they get the shield in the first place. The uni’s are not the states. Period. I can’t remember if it was the supremes that expressely stated they do get such immunity or if it was a lower court or what, but they certainly should not be.

    “Whether the state is a necessary party in this instance is probably something that the Supreme Court will need to decide”

    Idk about that, it seems such an easy question. At least to me it seems self evident that they are not, though they perhaps could be joined in, as in the case cited above. Though you may be right that the supremes may need to deny cert or whatever.

  15. This is a good point you raise, 6

    LOL – even better since 6 raises the issue 82 minutes after my post.

  16. 6, UMass originally was, but not State of Mass. the case proceeded on the basis that the U was the State.

    The better question would have been whether, when patent ownership of UMass was the issue, the State of Massachusetts itself was an indispensable party. But they did not tee this question up.

    Perhaps the Supremes will write a short clarification in a GVR, per curiam affirmal, saying the result was correct but the reasoning wrong, citing Illinois v. Milwaukee.

  17. This is a good point you raise, 6. I may have overstated the issue in my comment immediately preceding this one (when I wrote “between this and the passage from the statute that Dennis quotes there shouldn’t be much controversy about who has original and exclusive jurisdiction here”). Whether the state is a necessary party in this instance is probably something that the Supreme Court will need to decide (they could simply deny cert on that question, I suppose, in which case the Federal Circuit opinion would stand and jurisdiction would return to the District Court).

    One possible distinction between the Illinois v. Milwaukee case and this case is that the Federal statute governing the dispute in this case makes it pretty clear that the states are necessary parties. If state universities can claim sovereign immunity under the 11th amendment in patent cases, it would seem somewhat contradictory to characterize them differently for the purpose of jurisdiction …

  18. Interesting that they held that the cities were not the state but didn’t go ahead and lay out specifically what was the state for the purposes of this sort of thing.

    This right here might be fairly relevant though:

    “Though Wisconsin could be joined as a defendant here under appropriate pleadings, it is not mandatory that it be made one, and its political subdivisions are not ‘States’ within the meaning of 28 U.S.C. 1251(a)(1). If those subdivisions may be sued by Illinois in a federal district court, this Court’s original jurisdiction under § 1251(b)(3) is merely permissible, not mandatory.”

    If the political sub-divisions of the state are not the State of Wisconsin, then surely the sub-divisions of its education branch are not the State in the instant case. I would read this to imply that the “state of x” must be named as a party on each side, and I don’t think they are in the instant case were they?

  19. Comment at 8:16 removed

    Gee whiz, maybe nobody has any reason to care that you believe that you have identified someone who comments here but who also posts an occasional substantive comment (as opposed to an endless string of gratuitous insults or incomprehensible innuendo) at a different blog using a different pseudonym. I can think of at least one very good reason that a person might choose to do that. Can you guess what that reason is?

    comments like persist?

    Let’s spin the Magical Tr0 llb0y Insult Wheel and see what comes up. Oh, it’s that wonderful chestnut:

    “Those comments are directed at those who deserve them.”

    All you need to do, man, is just stop insulting people left and right because they disagree with you and stop smearing them (regardless of what they post or even whether they post anything at all) with your endless repulsive l i e s about their “voluntary admissions” and the imgaginary “beatdowns” you’ve administered. That doesn’t mean that you can’t disagree with them strongly and vociferously. And it doesn’t mean that you can’t identify instances where their expressed views about a subject don’t accord with a previosly expressed view. But when the person makes a sincere attempt to set the record straight about his/her own beliefs, you can’t just pretend it never happened and substitute your imagination for reality and continue with your inane insults.

    This has all been explained to you before.

  20. Ah, of course — thanks Ned. I was missing something! But it’s UMass and not UUtah who wants the case to be dismissed. I think Dennis made a boo-boo there.

    As you point out down below, if the Supreme Court has original and exclusive jurisdiction, they can’t refuse to hear the case (unless they want to ignore their own precedent — always a possibility but I think a very slim one).

    I believe there is zero chance here that the case is going to “disappear” because of any “lack of jurisdiction” over the dispute. UMass, for whatever reason, apparently wishes to delay any hearings on the substance of the dispute. If nothing else, it just forces UUtah to bleed money fighting about jurisdiction while UMass continues to accrue benefits from ownership of the patent. But absent some other bar to the lawsuit that hasn’t been discussed yet or an agreement between the parties as to who the correct inventors are, UUtah will get its day in court sooner or later (assuming they continue to care one way or the other).

  21. Thanks, Ned. I think between this and the passage from the statute that Dennis quotes there shouldn’t be much controversy about who has original and exclusive jurisdiction here. And in addition to being the law (apparently) it makes good sense that the Supreme Court can’t shirk it’s exclusive jurisdiction and deny the states a legal forum for their dispute.

    There’s also an article online by C. Ferrel Heady Jr. from the Washington Law Review, circa 1940, that goes pretty deep into the issue of USSC original jurisdiction. An oldie but a goodie.

  22. Absolutely. But when the state is a real party in interest (in this case, it almost certainly is… as it is assigned patent ownership in part), the lack of an alternative forum seems to be a critical factor in the exercise of exclusive original jurisdiction

  23. From Illinois v. Milwaukee:

    “It has long been this Court’s philosophy that ‘our original jurisdiction should be invoked sparingly.’ Utah v. United States, 394 U.S. 89, 95, 89 S.Ct. 761, 765, 22 L.Ed.2d 99. We construe 28 U.S.C. 1251(a)(1), as we do Art. III, § 2, cl. 2, to honor our original jurisdiction but to make it obligatory only in appropriate cases. And the question of what is appropriate concerns, of course, the seriousness and dignity of the claim; yet beyond that it necessarily involves the availability of another forum where there is jurisdiction over the named parties, where the issues tendered may be litigated, and where appropriate relief may be had. We incline to a sparing use of our original jurisdiction so that our increasing duties with the appellate docket will not suffer. Washington v. General Motors Corp., 406 U.S. 109, 92 S.Ct. 1396, 31 L.Ed.2d 727.

    In this case, the action was against several Wisconsin cities for pollution. The SC held the cities were not the state (meaning the jurisdiction was not exclusive) and then declined jurisdiction allowing the district court to hear the case.

    link to law.cornell.edu

  24. Guest, I think point is that original and exclusive jurisdiction is appropriate only where a State is a real party in interest, and not merely a nominal party.

  25. Yes, that could also be true, but as a practical matter in most derivation cases [aka originality contests] the opposing alleged inventors will swear that they really believed that they were the first inventors, and swear to different memories of the facts [of events that occured years earlier]. Likewise, inventorship declaration oath civil purjury prosecution would also be theoretically posssible, but is almost never even atempted.

  26. I must say I like this Rule 19(b) decision. From now on, I can sue corporate Secretaries instead of corporations as they have the power to sign assignments for the corporation.

  27. I am not sure the SC has the discretion to decline to hear a case when its jurisdiction is exclusive as here.

    Don’t tell me we’re going to have yet another discussion where patent attorneys demonstrate that they don’t know what “exclusive” means…

  28. I believe that when the jurisdiction is original, but not exclusive, the SC has discretion to decline.

    I do not believe that discretion exists if its jurisdiction is exclusive.

  29. To clarify, here is 28 USC 1251 in its entirety:

    (a) The Supreme Court shall have original and exclusive jurisdiction of all controversies between two or more States.
    (b) The Supreme Court shall have original but not exclusive jurisdiction of:
    (1) All actions or proceedings to which ambassadors, other public ministers, consuls, or vice consuls of foreign states are parties;
    (2) All controversies between the United States and a State;
    (3) All actions or proceedings by a State against the citizens of another State or against aliens.

  30. MM, I am not sure the SC has the discretion to decline to hear a case when its jurisdiction is exclusive as here.

    Regardless, if it did decline, and its jurisdiction is exclusive, that is it.

  31. Comment at 8:16 removed while comments like:

      you a–h0le s0ci0path l i a r” – 8:56 AM
      What a f*kng t 0 0 l: – 8:53 AM
      Tell me again that you are not a f*king s0ci0path blogtroll” – 10:38 AM
      Go f* ck yourself, you sick freak” – 12:28 PM

    persist?

    Really?

    C’est La Vie

  32. This is an interesting issue… does the joinder of non-state parties keep this from falling within the original/exclusive jurisdiction? If not, it becomes difficult for the Court to decline jurisdiction because there’s no alternative forum to raise such a claim. The serious/dignified and federalism issues are important, but the lack of an alternative forum seems to be the crucial factor here.

  33. If you do not have the actual inventors, then the inventors that signed the oath have committed fraud on the Office.

  34. Inventorship changes by settlement without a valid basis would lead to a patent attackable for incorrect inventorship.
    It’s too bad the actual merits of the incorrect inventorship allegation here are not getting considered in this completely jurisdictional dispute. This is presumably a belated derivation allegation [which usually has low odds of success] wherein the alleged prior inventor apparently did not consider it worth filing a patent application on until some time after seeing the issued patent of the other party, so that no interference was possible?

  35. the US Supreme Court has been reluctant to take cases such as this and has thus added requirements that the case be “serious,” “dignified,” and raising “important” federalism concerns

    The “serious and dignified” prongs seem pretty easy to meet with these facts. I don’t see anything funny or undignified about the issue. As to whether the “federalism concern” is sufficiently “important”, I’d be curious to know the facts in all cases “such as this” where the concern was deemed “important” enough by the Supreme Court to justify their time.

  36. I don’t think the 101 issue has been been addressed. The claims in the patent at issue here

    link to google.com

    are method claims drawn to the synthesis of siRNAs (small interfering RNAs : “a short (usually 21-bp) double-stranded RNA (dsRNA) with phosphorylated 5′ ends and hydroxylated 3′ ends with two overhanging nucleotides” <- wikipedia).

    While some of the siRNAs that would result from the claimed method seem to be indistinguishable from siRNAs found naturally in cells, the claimed method of synthesis is fundamentally different from the method that cells evolved. There might be other “natural” means used by cells for synthesizing siRNA that are more similar to the broadest method claims recited here, but they aren’t described in Wikipedia nor am I aware of any. I also don’t believe it would make much difference (to the proper patent assignees, whoever they turn out to be) even if a natural method identical to one or more of the broadest claims was subsequently discovered, given the recitation of “chemical synthesis” and other distinguishing limitations that appear in many of the dependent claims.

  37. such as stipulating that Dr. Bass is the sole inventor of the Tuschl II patents in exchange for ownership interests in the patents.

    I did not think inventorship was such a subject of negotiation.

  38. Moore seems to conflate the university with the state. I’m not really sure that the two are the same thing even if it is a branched off part of the state. For instance, seems like the dispute between the states would, at a minimum, require the state legislative bodies or governors to be having a controversy, not simply some small part of the state having a controversy with some other small part of the state. Having it be otherwise would seem to be absurd.

  39. This would appear to be the Supreme Court’s call.

    n reality, UUtah likely does not want the Supreme Court to directly hear the case. Rather, the strategy here is that the University is largely betting on the likelihood that the Supreme Court would decline to exercise jurisdiction – effectively ending the case.

    I must be missing something … Why would the Supreme Court’s failure to exercise jurisdiction “effectively end the case” (i.e., the dispute about who are the true inventors of the claimed technology), and why would UUtah want the case to be ended (they filed the lawsuit to correct inventorship in the first place)?

  40. Well, I suppose an opinion with Reyna and Wallach in the majority hadn’t been rebuked and reversed by the Supreme Court yet in CAFC earlier decisions. Very kind of them to set themselves up for the smack down.

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