by Dennis Crouch
Ali v. Carnegie Institution of Washington and the University of Massachusetts (Supreme Court 2017)
Sovereign Immunity protectionism continues to be an important topic in the patent law community. Although the biggest news this year has been the debate over immunity claimed by Tribal Nations owning patent rights, the actual major players in the area are states and state run public universities who hold so many patents.
This case involves Mussa Ali who was a graduate student at UMass working with Dr. Craig Mello on mRNA inhibitors. Mellow was awarded the nobel prize (along with Dr. Andrew Fire of Carnegie) stemming from their research in this area and obtained a collection of patents that are co-owned between UMass and Carnegie.
Ali was not listed as an inventor of any of the patents and that alleged exclusion is the basis of the lawsuit filed under 35 U.S.C. § 256.
The problem for Ali – UMass is a wing of the State of Massachusetts, and the 11th Amendment provides US States immunity from being sued in Federal Court. That approach was affirmatively stated by the Supreme Court in Florida Prepaid Postsecondary striking down the Patent Remedy Act which was designed to hold States liable for patent infringement. An element of its decision though, was that “Congress identified no pattern of…constitutional violations.” Of course times have changed since then. In Xechem, Judge Newman wrote in concurrence to recognize “an increasing urgency, as the States enter the private competitive arena governed by the laws of intellectual property, to establish fair relationships and just recourse.”
In Ali’s case, UMass was dismissed as a party on immunity, and then the still-pending suit against Carnegie was also dismissed since UMass was an indispensable party under FRCP R.19. That decision was affirmed on appeal. Because of federal preemption, Ali is also barred from filing suit in Massachusetts state court to resolve his claim of inventorship and equitable-ownership rights.
The new petition for writ of certiorari asks the following questions:
1. At what point do patent-owning States waive their sovereign immunity when they voluntarily participate in the patent system?
2. If Eleventh Amendment sovereign immunity is extended to allow patent-owning states to escape suits under § 256, how is this not a taking from wrongfully omitted inventors and a violation of due process of law under the Fourteenth Amendment?
3. Carnegie is a private entity and does not have Eleventh Amendment sovereign immunity. If a State is allowed to essentially extend its sovereign immunity privilege to a private entity who co-owns a patent, how is this not a State granting a privileged status to select citizens and violative of the equal protection clause of the Fourteenth Amendment?
4. 35 U.S.C. § 256 … was specifically enacted to provide a judicial mechanism to correct inventorship in patents. Can Eleventh Amendment sovereign immunity subjugate Congress’ express power under Art. 1, Sec. 8?
Important issues here that have the potential of extending our discussion of the rights of inventors and the role of governmental players in the marketplace.
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Moving Forward: I would recommend that faculty and student groups consider this issue as you develop and negotiate your employment agreement with the University.
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11th Amendment, Constitution of United States of America
The Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by Citizens of another State, or by Citizens or Subjects of any Foreign State.