United States: Is There Supreme Court Exclusive Jurisdiction Over Patent Inventorship Disputes Between State Universities? Federal Circuit Says No

In University Of Utah V. Max-Planck-Gesellschaft, the Federal Circuit was faced with deciding whether a patent inventorship dispute between two different state universities is a "dispute between two states" that falls under the Supreme Court's exclusive jurisdiction. A divided panel of the court determined that it is not.

The Patents at Issue

The patents at issue are U.S. Patent 7,056,704 and U.S. Patent 7,078,196, directed to RNAi technology. The patents name Dr. Tuschl of the University of Massachusetts (UMass) as the inventor. The University of Utah (UUtah) believes that it's researcher, Dr. Bass, should be named as sole or joint inventor of the patent.

The Defendants

UUtah brought suit in the U.S. District Court for the District of Massachusetts, seeking correction of inventorship under 35 USC § 256. UUtah originally named UMass as a defendant, but amended its complaint to name university officials instead when UMass moved to dismiss on the ground that the Supreme Court has exclusive original jurisdiction over disputes between states.

The officials moved to dismiss on the grounds that the claim was barred by sovereign immunity, that the Supreme Court had original exclusive jurisdiction, and that UMass was an indispensable party. The district court denied the motion.

Judge Reyna wrote the opinion for the Federal Circuit, which was joined by Judge Wallach. Judge Moore wrote a dissenting opinion.

Sovereign Immunity

The Federal Circuit quickly disposed of the sovereign immunity argument.

[A] state university generally may not be sued for infringement, nor may it be forced to defend against an action for declaratory judgment of invalidity or non-infringement. .... But States do not enjoy sovereign immunity from suits brought by other States. .... Similarly, States are free to sue citizens of other States without raising sovereign immunity issues.

Supreme Court Jurisdiction

The majority opinion notes that Article III, § 2, cl. 2 of the Constitution provides for Supreme Court exclusive jurisdiction over disputes between states:

In all Cases . . . in which a State shall be Party, the [S]upreme Court shall have original Jurisdiction."

Further, under 28 USC § 1251(a), "[w]hen a State sues another State, the [Supreme] Court's jurisdiction is not only original, but exclusive." On the other hand, "when a State sues the citizens of another State, the Supreme Court's original jurisdiction is concurrent with the district courts," in accordance with 28 USC § 1251(b)(3).

The majority determined that § 1251(a) does not apply to patent inventorship disputes:

We hold that a State has no core sovereign interest in inventorship. The inventors of a patent are "the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention." 35 U.S.C. § 100(f). .... [B]ecause States cannot be inventors, it follows that inventorship is not a core sovereign interest of the States.

In reaching this decision, the majority drew a sharp line between inventorship and ownership, and distinguished patent ownership from "State ownership of water rights, natural resources, or other property issues that 'implicate serious and important concerns of federalism' and rise to the level of core sovereign interests."

The majority also noted that a decision on patent inventorship would not compel or restrain state action.

A judgment ordering the Director of the USPTO to correct inventorship will not require or restrain UMass from acting. Neither UMass nor its officials are required to cooperate with UUtah in petitioning for the correction of inventorship..... Thus, should UUtah prevail, the district court's judgment would not directly restrain or compel UMass.

Indispensable Party

The majority also rejected arguments that UMass is an indispensable party under rule 19(b) of the Federal Rules of Civil Procedure. The majority outlined the following factors to be considered:

(1) the extent to which a judgment rendered in the person's absence might prejudice that person or the existing parties;

(2) the extent to which any prejudice could be lessened or avoided by:

(A) protective provisions in the judgment;

(B) shaping the relief; or

(C) other measures;

(3) whether a judgment rendered in the person's absence would be adequate; and

(4) whether the plaintiff would have an adequate remedy if the action were dismissed for non-joinder.

The majority also cited Federal Circuit precedent that provides this further guidance:

In weighing these factors, courts "should keep in mind the policies that underlie Rule 19, 'including the public interest in preventing multiple and repetitive litigation, the interest of the present parties in obtaining complete and effective relief in a single action, and the interest of absentees in avoiding the possible prejudicial effect of deciding the case without them.'"

The majority found no error in the district court's determination that UMass was not an indispensable party, approving the following findings:

  • UMass's interests would be adequately represented by the other defendants
  • There was little risk of prejudice
  • Correction of inventorship would not be impacted by UMass's absence
  • The availability of an alternative forum is not clear, because it is not certain that the Supreme Court would accept jurisdiction over a patent inventorship dispute between two state universities.

Thus, the Federal Circuit affirmed the district court's decision denying the motion to dismiss.

Judge Moore's Dissent

Judge Moore's dissenting opinion finds fault with two aspects of the majority decision.

First, she does not agree that "a patent ownership dispute between two state universities is not a 'controversy between two or more States," that must be heard by the Supreme Court.

Section 1251(a) contains "uncompromising language":

the Supreme Court has original and exclusive jurisdiction over "all controversies between two or more States." .... 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. .... 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.

Second, she does not agree that "a patent owner is not an indispensable party to an action that seeks to reassign title to the patents-in-suit."

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. .... 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. .... Because UMass does not have identical interests with any of the named defendants, it is an indispensable party in this case.

Will The Supreme Court Grant Certiorari?

In her dissenting opinion, Judge Moore states that the majority's requirement for "a core sovereign interest to implicate the Supreme Court's exclusive jurisdiction erodes the Court's discretion to decide which controversies it will hear." If the Supreme Court sees it that way, it is likely to take up this case for review and decide for itself the contours of its original exclusive jurisdiction.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
McDermott Will & Emery
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
McDermott Will & Emery
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions