Ali v. Carnegie Institution of Washington
2015 U.S. Dist. LEXIS 82975
| D.D.C. | 2015Background
- Plaintiff Mussa Ali, formerly employed at UMass, alleges he was omitted as a co-inventor on five RNAi-related patents co-owned by Carnegie and UMass and seeks correction of inventorship and monetary recovery.
- Ali initially sued only Carnegie in Oregon (Sept. 2012), later amended to add UMass and claims for damages tied to patent proceeds; Oregon dismissed UMass on sovereign-immunity grounds and transferred the case to D.D.C.
- This Court dismissed Ali’s amended complaint under Fed. R. Civ. P. 12(b)(7)/19 for failure to join UMass, finding UMass a necessary party whose interests (ownership and financial) would be prejudiced and that UMass could not be joined because of sovereign immunity.
- The Court allowed limited leave to amend to name UMass officials in official capacities to pursue inventorship correction under Ex Parte Young, but Ali did not timely file such an amendment.
- Ali moved for reconsideration (or leave to amend/reinstate his original complaint), arguing the Court clearly erred about UMass’s financial prejudice and that no alternative forum exists; Carnegie opposed as untimely and meritless.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether dismissal for failure to join a necessary party (UMass) was erroneous | Ali: Court clearly erred; UMass policy pays inventors a fixed pro rata share so naming Ali won't financially prejudice UMass | Carnegie: Motion untimely and wrong; Court properly weighed Rule 19 factors including prejudice and sovereign immunity | Denied — Court finds no clear error; UMass is a necessary party and dismissal stands |
| Whether newly proffered evidence (email re: UMass payout policy) warrants reconsideration | Ali: Email shows no new expense to UMass, so reconsideration justified | Carnegie: Evidence was known before judgment and does not change analysis | Denied — evidence not newly discovered and does not undermine original reasoning |
| Whether court could fashion relief to avoid prejudice to absent UMass (e.g., require co-inventors to pay Ali) | Ali: Court could order relief binding other payors or reshaping payouts to avoid harming UMass | Carnegie: Court cannot bind nonparties or restructure nonparty contracts; such remedies impracticable | Denied — court cannot bind nonparties; these arguments were available earlier and cannot be raised on reconsideration |
| Whether absence of an adequate alternative forum (e.g., Massachusetts state court) compels keeping the case | Ali: No workable alternative forum exists; thus dismissal is improper | Carnegie: Alternative forum exists or factor is at best neutral; sovereign immunity outweighs lack of forum | Denied — Court considered alternative-forum issue and concluded sovereign immunity and other Rule 19 factors control |
Key Cases Cited
- Ex Parte Young, 209 U.S. 123 (1908) (permits suits for prospective injunctive relief against state officials despite sovereign immunity)
- Republic of the Philippines v. Pimentel, 553 U.S. 851 (2008) (where sovereign immunity is asserted and claims are non-frivolous, dismissal is required if absent sovereign could be injured)
- Taylor v. Sturgell, 553 U.S. 880 (2008) (one is not bound by a judgment in personam in litigation to which he was not a party)
- Provident Tradesmens Bank & Trust Co. v. Patterson, 390 U.S. 102 (1968) (absent nonparties cannot be bound by a judgment; Rule 19 balancing required)
- Ciralsky v. CIA, 355 F.3d 661 (D.C. Cir. 2004) (standards for relief under Rule 59(e); motions to alter or amend are disfavored)
- Kramer v. Gates, 481 F.3d 788 (D.C. Cir. 2007) (Rule 60(b) is a narrow, sparingly used remedy and cannot rescue litigants from poor strategic choices)