SARIS, District Judge.
This case is the latest battle in the continuing war over patent rights in the field of RNA interference ("RNAi"), also known as gene silencing.
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.
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
Defendants first contend this Court does not have subject matter jurisdiction over the claims against the UMass state officials because they are barred by sovereign immunity. Generally speaking, "State[s] ... can[not] be sued as defendant[s] in any court in this country without their consent, except in the limited class of cases in which a State may be made a party in the Supreme Court of the United States by virtue of the original jurisdiction conferred on [the Supreme Court] by the Constitution." Cunningham v. Macon & B.R. Co., 109 U.S. 446, 451, 3 S.Ct. 292, 27 L.Ed. 992 (1883). "Claims against a state official in his official capacity are treated as claims against the state." Negron-Almeda v. Santiago, 528 F.3d 15, 21 n. 2 (1st Cir.2008).
The Ex parte Young doctrine is 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. "[W]here prospective relief is sought against individual state officers in a federal forum based on a federal right, [sovereign immunity], in most cases, is not a bar." Idaho v. Coeur d'Alene Tribe, 521 U.S. 261, 276-77, 117 S.Ct. 2028, 138 L.Ed.2d 438 (1997). This exception is predicated on the legal fiction that, when a plaintiff seeks prospective relief and not retrospective monetary relief that would be paid out of the state's treasury, the suit is only against the state official and not against the state itself. See Pennhurst State School & Hosp. v. Halderman, 465 U.S. 89, 102, 104 S.Ct. 900, 79 L.Ed.2d 67 (1984). Whether a request for relief is prospective requires a "straightforward inquiry into whether the complaint alleges an ongoing violation of federal law and seeks relief properly characterized as prospective." Verizon Md., Inc. v. PSC, 535 U.S. 635, 645, 122 S.Ct. 1753, 152 L.Ed.2d 871 (2002) (internal quotations omitted). 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. See Edelman v. Jordan, 415 U.S. 651, 667, 94 S.Ct. 1347, 39 L.Ed.2d 662 (1974).
At oral argument, counsel for defendants for the first time argued that because the relief sought in a correction of inventorship claim under 35 U.S.C. § 256 lies against the USPTO and not the state officials, Ex parte Young does not apply. Section 256 states that to correct inventorship the court "may order correction of the patent ... and [the Patent Office] shall issue a certificate [of correction]." 35 U.S.C. § 256. Although it is true that the USPTO must correct the patent if plaintiff prevails, the requested relief is still prospective in nature, and does not involve a retroactive remedy. Thus, the Ex parte Young exception may still apply to the request for relief.
Defendants contend that the Ex parte Young doctrine does not apply in this case because it is within the Supreme Court's original and exclusive jurisdiction over all controversies between two or more states. 28 U.S.C. § 1251(a). 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. Cf. Seminole Tribe v. Florida, 517 U.S. 44, 73-74, 116 S.Ct. 1114, 134 L.Ed.2d 252 (1996)(holding it was "the carefully crafted and intricate remedial scheme set forth [by Congress]" that barred Ex parte Young relief). 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." Connecticut ex rel. Blumenthal v. Cahill, 217 F.3d 93, 98 (2d Cir.2000). In Cahill, Connecticut sued New York state officials for allegedly enforcing an unconstitutional state statute forbidding nonresident commercial permit-holders from lobstering in an area of New York. Id. at 96. Because Connecticut chose to sue only New York state officials, but not the state itself, the case could proceed in district court. Id. at 99; but see id. at 105-12 (Sotomayor, J., dissenting)(concluding that the Supreme Court has exclusive jurisdiction over Connecticut's dispute with New York because New York state was the real party in interest).
Defendants also claim that the relief UUtah seeks is retrospective, not prospective, because its effect will be to deprive the state of Massachusetts of its intellectual property. Defendants are correct that such relief would have a financial impact on UMass, as it would lose either a whole or partial interest in the patents, which have been licensed to pharmaceutical companies. Plaintiff argues that such effect is merely an ancillary effect of prospectively correcting inventorship of the patent. See Papasan v. Allain, 478 U.S. 265, 278, 106 S.Ct. 2932, 92 L.Ed.2d 209 (1986) (Ex parte Young doctrine applies "even though [prospective relief may be] accompanied by a substantial ancillary effect on the state treasury"). This case is not like the Supreme Court's decision in Coeur d'Alene Tribe. There, the Court held that Ex
Defendants further claim that the entire case must be dismissed because UMass is an indispensable party under Fed.R.Civ.P. 19 and must be joined. The Second Amended Complaint does not name UMass as a defendant in this lawsuit, and UMass has not sought to intervene. To determine whether a party is indispensable under Rule 19, "the court must determine [in its discretion] `whether in equity and good conscience the action should proceed among the parties before it, or should be dismissed.'" Picciotto v. Cont'l Cas. Co., 512 F.3d 9, 18 (1st Cir.2008)(quoting Fed.R.Civ.P. 19(b)). The Rule specifies the following four factors to consider:
Fed.R.Civ.P. 19(b). Considering the factors, I conclude that UMass is not an indispensable party. On the first two factors, a judgment rendered in UMass' absence will not prejudice UMass or the other parties. UMass' interests are well represented by the other defendants, internationally renowned research institutions and a university, as well as the state officials themselves. Indeed, in the earlier litigation, UMass was an active participant in this court when it was a co-defendant with the Whitehead Institute, among others. A vigorous joint defense was mounted. All defendants are also represented by the same counsel, one of the leading IP law firms in the United States, and there is no apparent conflict of interest. See Dainippon Screen Mfg. Co. v. CFMT, Inc., 142 F.3d 1266, 1272 (Fed.Cir.1998)("[P]rejudice to an absent party is mitigated when the interests of that party are adequately protected by those who are present.")(internal quotations omitted). On the third factor, a declaratory judgment rendered in UMass' absence regarding the inventorship of the Tuschl II patents will provide an adequate remedy since the USPTO is the entity which corrects the patent. On the fourth factor, while plaintiff would
Defendants have also filed a motion to dismiss the claims of joint and sole inventorship. UUtah asserts a claim for sole inventorship under 35 U.S.C. § 256.
Section 256 provides a mechanism to correct two types of inventorship errors: misjoinder and nonjoinder. Stark v. Advanced Magnetics, Inc., 119 F.3d 1551, 1553 (Fed.Cir.1997) ("Stark II"). Misjoinder occurs when a person who is not an inventor is mistakenly listed as an inventor. Id. at 1553. Section 256 allows for deletion of a misjoined inventor "whether that error occurred by deception or by innocent mistake." Id. at 1555. Nonjoinder occurs when a person who is an inventor mistakenly has not been listed as such where "the error [does not] involve any deceptive intention by the nonjoined inventor." Id. at 1553. "[S]ection 256 allows complete substitution of inventors as long as the true inventors are without deceptive intent." Id. at 1556. "If a patentee demonstrates that inventorship can be corrected as provided for in section 256, a district court must order correction of the patent, thus saving it from being rendered invalid." Pannu v. Iolab Corp., 155 F.3d 1344, 1350 (Fed.Cir.1998).
The Second Amended Complaint sufficiently alleges facts stating a claim for complete substitution, contending that Dr. Bass of UUtah was the sole inventor of the Tuschl II patents. The complaint states that Dr. Bass conceived the invention "that the RNase III enzyme Dicer was the key agent of [RNA interference], and hence, that the resultant molecule would have ... a 3' overhang, by treating multicellular animals with dsRNA corresponding to C. elegans
Defendants contend that UUtah is really making a claim for priority of invention, not sole inventorship, and such a claim is not actionable under § 256. Their reliance on Rubin v. Gen. Hosp. Corp., 2011 WL 1625024 (D.Mass. Apr. 28, 2011) is misplaced. In Rubin, the district court allowed summary judgment on a complete substitution claim where there was no evidence of "even the most minimal relationship of interaction with the named inventors." Id. at *12. Here, there are allegations of interaction between Dr. Bass and the named inventors. Further, although the district court points out that some district courts have not permitted complete substitution under § 256 where there is no collaboration at all between the inventors, § 256 does not require collaboration as a prerequisite for complete substitution. Stark is not so stark. Rather, it permits sole inventorship claims "as long as the true inventors are without deceptive intent." Stark II, 119 F.3d at 1556.
The Second Amended Complaint also alleges a sufficient "quantum of collaboration or connection" to meet the requirements of joint inventorship under 35 U.S.C. § 116. Kimberly-Clark Corp. v. Procter & Gamble Distrib. Co., 973 F.2d 911, 917 (Fed.Cir.1992); see Compl. ¶¶ 40-61. It alleges that Dr. Bass contributed in "some significant manner to the conception of the invention." Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed.Cir. 1997). Dr. Bass published an article explaining the capability to mediate RNAi in mammals with dsRNA fragments having a 3' overhang. Compl. ¶¶ 42-43. The named inventors read her article, and incorporated her work. Id. ¶¶ 46-48, 60. She also discussed her conception with the named inventors at two conferences and over dinner. Id. ¶¶ 51-53, 57-58. See Kimberly-Clark, 973 F.2d at 917 ("For persons to be joint inventors under Section 116, there must be some element of joint behavior, such as collaboration or working under common direction, one inventor seeing a relevant report and building upon it or hearing another's suggestion at a meeting."). Federal Circuit caselaw is clear that there is "no bright-line standard" in determining joint inventorship. Fina Oil, 123 F.3d at 1473. Accordingly, the motion to dismiss is denied.
Defendants' motions to dismiss (Docket No. 54 & Docket No. 57) are