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.
There is no legal right to “invention ownership.” There are property rights to patents, which initially are granted to inventors and may be assigned or licensed to entities such as state universities.
In Xechem, the Federal Circuit held that state universities are properly accorded Eleventh Amendment immunity from federal civil suit to correct inventorship under Section 256, but that property ownership issues are “generally the province of state courts” and, therefore, federal preemption of causes arising under the Patent Act does not include matters of ownership and license.
Graduate students often assign intellectual property rights arising from their research to their universities, and it is unclear whether Ali agreed to such an assignment in this case. If he did not, he should have the right to pursue his claim of ownership in state court.
However, there is a more fundamental issue. If Ali is correct, and can prove that he is a joint inventor, then the relevant patent is invalid unless inventorship is corrected under Section 256. Failure to make such correction should end up with everybody losing, and ground for fraud, antitrust violations, malicious prosecution and frivolous litigation if the patent is enforced through licensing or litigation.
The parties, including the “genius” Nobel laureates who took credit for Ali’s work, should settle.
I wonder how long ago the subject patents were filed, and first laid open? There really ought to be laches defense to “stale” excluded-inventorship claims, which should be decided on documentary evidence and recollections that may be long gone by now. Such disputes, like related “derivation” contests, are hard enough to decide even when fresh, what with almost inevitably directly conflicting testimony by the principals.
Shukh v. Seagate Technology, LLC, 803 F.3d 659 (Fed. Cir. 2015)(The reputation of an omitted inventor is harmed by his omission.) link to scholar.google.com
Ali has a host of state law claims against the U of M (and Carnegie could probably be joined as a party).
Dennis, I think it’s useful to post the text of the 11th amendment so we can all see how clear it is on this topic.
The text is somewhat clear and I have added it above. It was adopted to overcome getting to federal court on diversity grounds in cases against a state — that is why it is limited to actions between a state and “Citizens of another State.” By the 11th amendment’s terms, it seems that Ali could sue UMass in Federal Court if he was a citizen of Massachusetts.
By the 11th amendment’s terms, it seems that Ali could sue UMass in Federal Court if he was a citizen of Massachusetts.
Yes, it sure seems that way.
One wonders if there are any cases where a citizen of X sued X in a federal court for a federally created cause of action? I see no problem if a state waived sovereign immunity for suits by its own citizens for certain kinds of things, like breach of contract or torts.
But what if the waiver was only to allow the citizen to file a complaint where some clerk decided whether to compensate the citizen or not, but not otherwise providing a forum for a full and fair hearing?
1. At what point do patent-owning States waive their sovereign immunity when they voluntarily participate in the patent system?
This strikes me as the heart of the matter. A state (or its arm) claims ownership in a federally granted right — a right which both by statute and the Constitution requires inventorship (or assignment from an inventor). Having made such a claim and registered it with the PTO, the state should be deemed to have waived any immunity with respect to determining whether that ownership claim is accurate and valid.
Good comment. I think of it as whether a Federally created “system” of rights may come with limitations on participants, such as requiring adherence to a common set of rules to resolve disputes within that system. If not, then it places the Federally created system in a secondary position to the State interests. This would be a disincentive for the Federal government to even create such a system, as it would lead to uncertainty in outcomes.
Well, Congress can’t conjure away the 11th Amendment any more than it can the 7th Amendment. The Florida and Texas cases already hold that the patent scheme does not preempt the 11th Amendment just because a State owns a patent.
Dennis are you speculating that an employment agree/invention assignment agreement with a State University could contain a waiver of the State’s 11th Amendment immunity?
Congress didn’t “conjure” away the 11th amendment. The commonwealth of MA waived its immunity when it decided to participate in the federal patent system. You can’t have your cake and eat it too.
This is evident from what Jai Rho notes above, viz. that UMass and the named inventors are being stooooopid, because if the patent is ever asserted, the defendant will obtain a license from Ali and argue that he is an inventor, and that either the patent is invalid for his being willfully omitted from the list of inventors, or the defendant has a license and therefore doesn’t infringe. So if the patent is valuable, the inventorship question is going to be dealt with. And I can’t imagine any judge saying that since the named inventors assigned their rights to a state entity, that trumps the name-all-inventors-as-a-requirement-for-validity part of the patent statute. As I said, you can’t have your cake and eat it too.
Anon: One would have potential remedy in state court with a breach of contract claim.
Thanks – so the judicial power involved would not be the juridical power of the Fed level (The United States).
But what then of (in the state court) a remedy that could not be reached? (specifically, any remedy as to correcting ownership of the Federal patent). Or, beyond “ownership” itself and any type of practice or enforcement of that Federal item?
If (a mighty big if), the result is that the State can “get away with” such things, of what good would it do for any clause in a state contract (like an employment agreement)?
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