University of Utah Requests
Order Requiring Correction of Inventorship
Last week, the District of
Massachusetts rejected a motion to dismiss the University of Utah's (UUtah) RNA
patent complaint against state officials at the University of Massachusetts
(UMass) and other research institutes. UUtah's complaint alleges that Dr.
Brenda Bass, a professor on its faculty, should be named either the sole
inventor or a joint inventor on two RNA patents. The motion - based on sovereign
immunity - contended that the Supreme Court had exclusive subject matter
jurisdiction pursuant to 28
U.S.C. § 1251(a) because the case involved a controversy between
instrumentalities of two states: UUtah and UMass.
Generally speaking, states cannot be sued as defendants without
their consent, except in the limited class of cases in which a state may be
made a party in the Supreme Court by virtue of the original jurisdiction
conferred by the Constitution. However, the Ex
parte Young doctrine provides a narrow exception to this rule. The doctrine
permits an action in federal court against state officials seeking prospective relief to enjoin a
continuing violation of the U.S. Constitution or federal law.
In Univ. of Utah v.
Max-Planck-Gesellschaft zur Forderung der Wissenschaften E.V., 2012 U.S.
Dist. LEXIS 80311 (D. Mass. June 11, 2012) [enhanced version available to lexis.com subscribers], the UMass defendants contended that the Ex parte Young doctrine did not apply because the case was within
the Supreme Court's original and exclusive jurisdiction over all controversies
between two or more states. The court rejected this contention:
In defendants' view, because the
real party in interest here is UMass, a co-owner of the patent, this case
involves a battle between two state entities, and there is a sufficient remedy
in an alternative forum, the Supreme Court. However, UUtah chose to sue the
state officials in federal district court, and to drop the state as a party to
preclude exclusive jurisdiction in the Supreme Court. In an analogous
situation, the Second Circuit held that the plaintiff has the right to choose
whether to name the state or state officials as defendants and "to enjoy (or
suffer) the jurisdictional consequences of that decision."
In another attempt to avoid Ex parte Young, defendants claimed that UUtah's relief was retrospective,
not prospective, because the effect would be to deprive the state of
Massachusetts of its intellectual property. Defendants were correct that such
relief would have a financial impact on UMass, as it would lose either a whole
or partial interest in the patents. However, UUtah argued that such effect was
merely an ancillary effect of prospectively correcting inventorship. As noted by the court, determining prospective relief:
requires a "straightforward
inquiry into whether the complaint alleges an ongoing violation of federal law
and seeks relief properly characterized as prospective." A federal court
can order prospective relief that has an impact on the state treasury, provided
that the impact on the state treasury is only an ancillary result of requiring
that the state official conform his or her conduct to the dictates of federal law.
In rejecting defendants' retrospective / prospective argument, the court
a state's interest in patents does
not "uniquely implicate sovereign interests." In the absence of a
"core sovereign interest," a state's injunction suit against state
officers "may properly proceed in a district court." Unlike disputes
over lakes, rivers, and state boundaries, a quarrel over patent rights does not
implicate core sovereign interests. Accordingly, this court has jurisdiction
over the action against the UMass state officials under the Ex parte Young doctrine.
The defendants further argued that because the relief sought in a 35 U.S.C. § 256 correction of inventorship claim would be directed against the USPTO and not state officials, Ex parte Young did not apply. Despite the fact that the USPTO would correct the patent if UUtah prevailed, the requested relief was still prospective in nature and did not involve a retroactive remedy. Thus, the Ex parte Young exception could still apply to the request for relief.
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