State Universities Get Free Pass in Inventorship Challenges

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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 Cir., No. 2016-2320, unpublished 4/12/17 ).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.

UMass an Indispensable Party

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.

Inventorship Issue Caught in Limbo

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

To contact the editor responsible for this story: Mike Wilczek at

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