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Univ. of Utah v. Max-Planck-Gesellschaft zur Forderung der Wissenschaften E.V.

United States District Court for the District of Massachusetts

June 11, 2012, Decided; June 11, 2012, Filed

C.A. No. 11-cv-10484-PBS





This case is the latest  [**2] battle in the continuing war over patent rights in the field of RNA interference ("RNAi"), also known as gene silencing. 1 RNAi is a process whereby a double-stranded RNA molecule inserted into a cell directs the destruction of messenger RNA before it can be translated into a protein. It has great potential therapeutic value.

The University of Utah ("UUtah") brings this Second Amended Complaint against state officials at the University of Massachusetts ("UMass") and other research institutes, alleging that Dr. Brenda Bass, a professor on its faculty, should be named either the sole inventor or a joint inventor on two patents—U.S. Patent No. 7,056,704  [*154]  and U.S. Patent No. 7,078,196—collectively referred to as the "Tuschl II" patents, named after Dr. Thomas Tuschl, the first named inventor. The complaint requests the Court to order the U.S. Patent and Trademark Office ("USPTO") to correct inventorship, to issue a declaratory  [**3] judgment, and to require the defendants to cease violating federal patent law by naming Dr. Bass as a sole or joint inventor. The claims of the Tuschl II patents are directed to methods of preparing a particular type of double-stranded RNA molecule that can mediate RNAi. The molecule has a "3' overhang," a sequence of nucleotides on one end of an RNA strand that hangs over the other RNA strand and make up a double-stranded RNA molecule.

The defendants press two motions to dismiss UUtah's lawsuit. First, the UMass official defendants contend that the Supreme Court has exclusive subject matter jurisdiction pursuant to 28 U.S.C. § 1251(a) because the case involves a controversy between instrumentalities of two states: UUtah and UMass, one of the current holders of the Tuschl II patents. Second, all defendants argue that UUtah has failed to state plausible claims for sole or joint inventorship of the patents. After a hearing, the Court DENIES the pending motions to dismiss.

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881 F. Supp. 2d 151 *; 2012 U.S. Dist. LEXIS 80311 **; 2012 WL 2105066

UNIVERSITY OF UTAH, Plaintiff, v. MAX-PLANCK-GESELLSCHAFT zur FORDERUNG der WISSENSCHAFTEN E.V., a corporation organized under the laws of Germany; MAX-PLANCK-INNOVATION GmbH, a corporation organized under the laws of Germany; WHITEHEAD INSTITUTE FOR BIOMEDICAL RESEARCH, a Delaware corporation; MASSACHUSETTS INSTITUTE OF TECHNOLOGY, a Massachusetts corporation; ALNYLAM PHARMACEUTICALS, INC., a Delaware corporation; and ROBERT L. CARET, President of the University of Massachusetts in his official capacity; JAMES R. JULIAN, Executive Vice President and Chief Operating Officer of the University of Massachusetts, in his official capacity; DAVID J. GRAY, Senior Vice President for Administration, Finance, & Technology and University Treasurer of the University of Massachusetts, in his official capacity; and JAMES P. MCNAMARA, Executive Director, Office of Technology Management of the University of Massachusetts, in his official capacity, their predecessors and successors in office, Defendants.

Subsequent History: Request granted Univ. of Utah v. Max-Planck-Gesellschaft Zur Forderung Der Wissenschaften E.V., 2012 U.S. App. LEXIS 17413 (Fed. Cir., Aug. 17, 2012)

Affirmed by Univ. of Utah v. Max-Planck-Gesellschaft zur Forderung der Wissenschaften E.V., 734 F.3d 1315, 2013 U.S. App. LEXIS 17157 (Fed. Cir., Aug. 19, 2013)

Costs and fees proceeding at, Motion denied by Univ. of Utah v. Max-Planck-Gesellschaft zur Foerderung der Wissenschaften E.V., 2015 U.S. Dist. LEXIS 191399 (D. Mass., Nov. 30, 2015)

Prior History: Max-Planck-Gesellschaft Zur Forderung Der Wissenschaften E.V. v. Whitehead Inst. for Biomedical Research, 850 F. Supp. 2d 317, 2011 U.S. Dist. LEXIS 11469 (D. Mass., Feb. 7, 2011)


patent, inventor, state official, inventorship, correction, district court, parte, parties, motion to dismiss, sovereign, prospective relief, substitution, deceptive, molecule, alleges, Stark

Civil Procedure, US Supreme Court Review, General Overview, Constitutional Law, Jurisdiction, Subject Matter Jurisdiction, Exclusive Federal Jurisdiction, Governments, State & Territorial Governments, Claims By & Against, Business & Corporate Compliance, Patent Law, Infringement Actions, Corporate & Government Infringers, Joinder of Parties, Compulsory Joinder, Indispensable Parties, Patent Law, Originality, Correction of Inventorship Errors