University of Utah v. Max-Planck-Gesellschaft Zur Foerderung Der Wissenschaften E.V., 851 F.3d 1317

The dispute concerned inventorship of ten "Tuschl II" patents on small interfering RNA (siRNA) therapeutics; Dr. Brenda Bass (University of Utah) claimed sole or joint inventorship based largely on a 2000 Cell mini‑review she wrote proposing a role for 3' overhangs in RNAi.
Dr. Tuschl and colleagues independently published and later developed siRNA designs showing 3' overhangs enhance RNAi activity; Bass’s mini‑review was cited as prior art during patent prosecution.
UUtah sued to correct inventorship, alleging Bass either reduced the invention to practice or collaborated with Tuschl; Bass’s deposition undermined the sole inventorship theory and largely denied performing the relevant experiments.
UUtah withdrew its sole‑inventorship claim with prejudice before dispositive motions; it maintained a joint‑inventorship claim based on alleged conference discussions and Tuschl’s reliance on Bass’s published hypothesis.
The district court granted summary judgment for Max‑Planck on joint inventorship, finding no evidence of the necessary collaboration, and denied Max‑Planck’s motion for roughly $8M in attorney fees under 35 U.S.C. § 285, concluding the case was not "exceptional."
The Federal Circuit affirmed, holding the district court did not abuse its discretion in applying Octane Fitness and Highmark and weighing the totality of circumstances.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether the case was "exceptional" under 35 U.S.C. § 285 warranting attorney fees	UUtah argued its joint‑inventorship claim was colorable based on Bass’s published hypothesis and alleged interactions with Tuschl	Max‑Planck argued the claim was objectively unreasonable after Bass’s deposition and that UUtah pursued meritless/extortionate litigation	Affirmed: District court did not abuse discretion; case was not exceptional under Octane given competing inferences and trial court’s fact‑based judgment
Whether Bass was a joint inventor (sufficient collaboration)	UUtah argued Tuschl relied on Bass’s mini‑review and one or more conference discussions to incorporate her idea into the patented work	Max‑Planck argued reliance on a published mini‑review and a single conference dinner did not show the required joint collaboration	Affirmed: Summary judgment for Max‑Planck; no evidence of the collaboration required for joint inventorship
Whether UUtah’s withdrawal of sole‑inventorship claim and damages request affected exceptional‑case analysis	UUtah noted it withdrew the weak sole‑inventorship claim and defended its remaining theory; damages arguments were within advocacy bounds	Max‑Planck cited late withdrawal and large damages as evidence of frivolous or objectively unreasonable conduct	Held: District court credited withdrawal and did not find late tactics or damages demanded rendered the case exceptional

Octane Fitness, LLC v. Icon Health & Fitness, Inc., 134 S. Ct. 1749 (2014) (defines "exceptional" case standard and permits totality‑of‑circumstances discretionary inquiry under § 285)
Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 134 S. Ct. 1744 (2014) (applies abuse‑of‑discretion standard to district court fee determinations)
Kimberly‑Clark Corp. v. Proctor & Gamble Distributing Co., 973 F.2d 911 (Fed. Cir. 1992) (recognizes that one inventor seeing a relevant report and building on it may support collaboration in some circumstances)
SFA Sys., LLC v. Newegg Inc., 793 F.3d 1344 (Fed. Cir. 2015) (district court discretion in assessing exceptional cases under Octane and Highmark)
Insite Vision Inc. v. Sandoz, Inc., 783 F.3d 853 (Fed. Cir. 2015) (clear error standard for reviewing factual findings)