University of Utah v. Max-Planck-Gesellschaft Zur Forderung Der Wissenschaften E.V.
734 F.3d 1315
Fed. Cir.2013Background
- University of Utah (UUtah), as assignee of Prof. Brenda Bass, sued to correct inventorship of two Tuschl patents under 35 U.S.C. § 256 and sought related declaratory relief and state-law claims against the patents’ assignees.
- UUtah originally named University of Massachusetts (UMass) among defendants; UMass moved claiming the dispute was between States and thus within the Supreme Court’s exclusive original jurisdiction.
- UUtah amended to substitute four UMass officials for UMass to avoid Supreme Court original jurisdiction; those officials moved to dismiss asserting sovereign immunity and that UMass was an indispensable party.
- The district court denied dismissal, concluding (1) UMass was not the real party in interest for § 1251(a) purposes and district courts had jurisdiction under Ex parte Young, (2) Eleventh Amendment sovereign immunity did not bar the suit as pleaded, and (3) UMass was not indispensable under Rule 19(b).
- The Federal Circuit affirmed: it held this was not a controversy between States triggering the Supreme Court’s exclusive jurisdiction, sovereign immunity did not block the claim as pleaded, and UMass’s absence did not render the suit non-viable under Rule 19(b).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the district court lacked subject-matter jurisdiction because the dispute is a "controversy between States" under 28 U.S.C. § 1251(a) | UUtah argued it could sue the UMass officials in district court and that UMass was not the real party in interest | Defendants argued UMass (an arm of Massachusetts) was the real party in interest and thus the case falls within the Supreme Court’s exclusive original jurisdiction | Held: Not a controversy between States; UMass is not the real party in interest for §1251(a) because inventorship/ownership here does not implicate a core sovereign interest and the requested relief would not directly compel or restrain UMass |
| Whether Eleventh Amendment sovereign immunity bars UUtah’s suit | UUtah: no sovereign-immunity bar because the suit is against state officials and effectively a suit by a State against citizens of another State | Defendants: UMass (and its officials) have Eleventh Amendment immunity | Held: No sovereign-immunity bar under the pleadings; Ex parte Young-type relief available because this is not a suit by private citizens against a State and the State is not a real party in interest |
| Whether UMass is an indispensable party under Fed. R. Civ. P. 19(b) | UUtah: UMass can be absent because the other defendants adequately represent the owners’ interests and an order to the PTO correcting inventorship would provide complete relief | Defendants: UMass is an indispensable co-owner whose absence prejudices UMass and renders judgment inadequate | Held: UMass is not indispensable—(1) existing defendants adequately represent its interests (joint counsel, overlapping stakes), (2) relief against the USPTO would be effective, and (3) practical considerations (e.g., assignment of control to Alnylam) weigh against dismissal |
| Applicability of Ex parte Young and ability to seek corrective relief under 35 U.S.C. § 256 | UUtah: §256(b) permits court-ordered correction of inventorship without needing the State itself to be a defendant; relief would operate through the USPTO | Defendants: Any effective corrective relief would operate against the State and thus implicate sovereign immunity and Supreme Court jurisdiction | Held: §256(b) relief can be granted without compelling state action by UMass; a judicial order directing the USPTO to correct inventorship does not make UMass the mandatory party or directly compel UMass to act |
Key Cases Cited
- Connecticut ex rel. Blumenthal v. Cahill, 217 F.3d 93 (2d Cir. 2000) (framework for when a plaintiff-State’s choice of state-official defendants permits district-court jurisdiction rather than Supreme Court exclusive jurisdiction)
- Pennhurst State School & Hosp. v. Halderman, 465 U.S. 89 (U.S. 1984) (decree operates against the State when it compels or instructs state administration; real-party-in-interest analysis)
- Dugan v. Rank, 372 U.S. 609 (U.S. 1963) (judgment nominally against officers is against the sovereign if it would restrain or compel government action)
- Illinois v. City of Milwaukee, 406 U.S. 91 (U.S. 1972) (factors for deciding whether Supreme Court original jurisdiction is appropriate and when a State is not a mandatory party)
- A123 Sys., Inc. v. Hydro-Quebec, 626 F.3d 1213 (Fed. Cir. 2010) (state-university sovereign immunity and joinder principles in patent litigation)
- Dainippon Screen Mfg. Co. v. CFMT, Inc., 142 F.3d 1266 (Fed. Cir. 1998) (absent patent owner not indispensable where absent party’s interests are effectively identical and adequately represented)
- Ex parte Young, 209 U.S. 123 (U.S. 1908) (doctrine permitting suits against state officials for prospective injunctive relief to vindicate federal rights)
- Chou v. Univ. of Chi., 254 F.3d 1347 (Fed. Cir. 2001) (parties with an economic stake are proper parties in §256 disputes)