Access practice tools, as well as industry leading news, customizable alerts, dockets, and primary content, including a comprehensive collection of case law, dockets, and regulations. Leverage...
By Tony Dutra
Two Nobel laureates who uncovered a fundamental mechanism for controlling the flow of genetic information don’t have to face—in either federal or state court—a request to add an inventor to the patents underlying their discovery, a federal appeals court ruled April 12 ( Ali v. Carnegie Inst. of Washington , 2017 BL 119469, Fed. Cir., No. 2016-2320, unpublished 4/12/17 ).
The U.S. Court of Appeals for the Federal Circuit affirmed a ruling that Andrew Z. Fire of the Carnegie Institution of Washington and Craig C. Mello of the University of Massachusetts are shielded under federal patent law because the state-owned university has sovereign immunity under the 11th Amendment. The men were awarded the 2006 Nobel Prize in Physiology or Medicine.
The Patent Act, also, doesn’t allow state courts to hear inventorship disputes, the court added. And Mussa Ali, the inventorship claimant here, who represented himself, couldn’t convince the court to let the case proceed without UMass as a party.
Judge Timothy B. Dyk concurred with the appeals court’s conclusion—despite this “particularly harsh” result. Dyk said he hoped the court could find a case in the future that would allow an inventorship claim to proceed under such circumstances.
The case provides an illustration of how hard it can be for co-inventors to get a share of the wealth of universities’ licensing revenues. In 2014 alone, patent licensing revenue for universities were $2.2 billion, Bloomberg reported. Here, Ali was precluded from bringing his inventorship claim in either federal or state court.
The patents at issue, U.S. Patent Nos. 6,506,559, 7,538,095, 7,560,438, 7,622,633 and 8,283,329, are on methods of gene-specific inhibition through the use of double-stranded ribonucleic acid. They are co-assigned to Carnegie and UMass.
Ali was employed in Mello’s UMass laboratory and claimed to have made a critical contribution in 1997, before the first application in the patent family was filed.
The court ruled that the university had to be dismissed from the federal case under the 11th Amendment, and yet was an indispensable party to resolving Ali’s complaint.
Federal Rule of Civil Procedure 19(b) allows an action to proceed in federal court in “equity and good conscience” without an important party. It lays out a four-factor test, and the Federal Circuit let such a case go forward, in University of Utah v. Max-Planck-Gesellschaft Zur Forderung Der Wissenschaften E.V., 734 F.3d 1315, 107 U.S.P.Q.2d 1989 (Fed. Cir. 2013). UMass was also involved in that case. But its appearance was determined to be not indispensable because it had handed control over licensing and enforcement to assignee Alnylam Pharmaceuticals Inc.
Unfortunately for Ali, UMass and Carnegie had no such arrangement in the current case. The court ruled that UMass was, without doubt, required in this case because its interests would have been harmed if Ali eventually won.
Dyk contrasted the absence of a solution for Ali with property law generally. Parties usually have the opportunity to resolve a property dispute with a state entity in state court.
But the only way to request a correction to an existing patent as to inventorship is in federal court, per 35 U.S.C. §256. “No State court shall have jurisdiction over any claim for relief arising under any Act of Congress relating to patents,” per 28 U.S.C. §1338(a).
The phrase “relating to patents” is broad but has at least two exceptions. As seen in Utah, a patent licensing dispute could be heard in state court. The Supreme Court also held that patent malpractice cases might belong in state court as well. Gunn v. Minton, 133 S. Ct. 1059, 185 L. Ed. 2d 72, 105 U.S.P.Q.2d 1665 (2013).
But inventorship falls within the federal court-only “relating to patents” web, as Dyk admitted. Nevertheless, he said, “it remains for us to determine in another case how the Rule 19(b) factors should apply to a claim for inventorship, given the lack of any alternative remedy.”
Judges William C. Bryson and Raymond T. Chen were also on the appeals court panel, which issued the opinion without author.
Covington & Burling LLP, Redwood Shores, Calif., represented the institution and the university.
To contact the reporter on this story: Tony Dutra in Washington at email@example.com
To contact the editor responsible for this story: Mike Wilczek at firstname.lastname@example.org
Text available at http://src.bna.com/nRN.
Copyright © 2017 The Bureau of National Affairs, Inc. All Rights Reserved.
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to email@example.com.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to firstname.lastname@example.org.
Put me on standing order
Notify me when new releases are available (no standing order will be created)