University of Utah v. Max-Planck-Gesellschaft Zur Forderung Der Wissenschaften E.V. ( 2013 )

United States Court of Appeals
for the Federal Circuit
______________________
UNIVERSITY OF UTAH,
Plaintiff-Appellee,
v.
MAX-PLANCK-GESELLSCHAFT ZUR
FORDERUNG DER WISSENSCHAFTEN E.V., MAX-
PLANCK-INNOVATION GMBH, WHITEHEAD
INSTITUTE FOR BIOMEDICAL RESEARCH,
MASSACHUSETTS INSTITUTE OF TECHNOLOGY,
AND ALNYLAM PHARMACEUTICALS, INC.,
Defendants-Appellants,
AND
ROBERT L. CARET, JAMES R. JULIAN, JR.,
DAVID J. GRAY, AND JAMES P. MCNAMARA,
Defendants-Appellants.
______________________
2012-1540, -1541, -1661
______________________
Appeals from the United States District Court for the
District of Massachusetts in No. 11-CV-10484, Judge
Patti B. Saris.
______________________
Decided: August 19, 2013
______________________
2 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT
MARK S. CARLSON, Hagens Berman Sobol Shapiro,
LLP, of Seattle, Washington, argued for plaintiff-appellee.
With him on the brief was STEVE W. BERMAN.
DAVID I. GINDLER, Irell & Manella, LLP, of Los Ange-
les, California, argued for all defendants-appellants.
With him on the brief were MORGAN CHU, and ALAN J.
HEINRICH. Of counsel on the brief were SANDRA L.
HABERNY, of Newport Beach, California; and THOMAS F.
MAFFEI and SCOTT MCCONCHIE, Griesinger, Tighe &
Maffei, L.L.P., of Boston, Massachusetts.
______________________
Before MOORE, REYNA, and WALLACH, Circuit Judges.
Opinion for the court filed by Circuit Judge REYNA.
Dissenting opinion filed by Circuit Judge MOORE.
REYNA, Circuit Judge.
The University of Utah (“UUtah”) brought this law-
suit to correct inventorship of U.S. Patent Nos. 7,056,704
and 7,078,196 (the “Tuschl Patents”). Originally, UUtah
named as defendants the assignees (“Assignees”) of the
Tuschl Patents: Max-Planck-Gesellschaft zur Forderung
der Wissenschaften e.V., Max-Planck-Innovation GmbH,
Whitehead Institute for Biomedical Research, Massachu-
setts Institute of Technology, and Alnylam Pharmaceuti-
cals, Inc., (collectively, the “non-State Defendants”) and
the University of Massachusetts (“UMass”).
UMass argued that, because the dispute was between
two States, the Supreme Court had exclusive original
jurisdiction. In response, UUtah amended its complaint,
substituting four UMass officials (the “Named Officials”)
in place of UMass. The Named Officials then moved to
dismiss the case, arguing that UUtah’s claims were
barred by sovereign immunity and that UUtah had failed
to join UMass, which they claimed was an indispensable
UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT 3
party. The district court denied the motion, and the
defendants appealed.
This case requires us to examine the issues of sover-
eign immunity and federal jurisdiction that arise when
state universities are involved on both sides of an inven-
torship dispute. For the reasons that follow, we affirm.
BACKGROUND
The following facts come from UUtah’s complaint
which, for the purpose of evaluating the motion to dis-
miss, we take as true.
Dr. Brenda Bass is a professor of biochemistry at
UUtah. Her research is focused on RNA biochemistry. In
particular, Dr. Bass studies RNA interference (“RNAi”), a
phenomenon in which RNA plays a role in silencing the
expression of individual genes. Her employment agree-
ment assigns to UUtah the rights to all inventions and
discoveries she makes as a result of her employment or
research, including the rights to any patents arising from
her work.
Dr. Thomas Tuschl, a researcher employed by UMass,
is also active in RNAi research. In the course of their
work, Drs. Tuschl and Bass attended professional confer-
ences at which they both presented papers on RNA and
RNAi issues. Both researchers were familiar with each
other’s work. Dr. Tuschl eventually applied for and was
granted the Tuschl Patents, which Dr. Bass claims “dis-
closed and claimed [her] conception.” Dr. Bass is not a
named inventor on either of the Tuschl Patents.
UUtah, as assignee of Dr. Bass’s rights, believes that
Dr. Bass is the sole or a joint inventor of the Tuschl
Patents. UUtah asked Assignees to cooperate in petition-
ing the United States Patent and Trademark Office
(“USPTO”) to correct the inventorship of the Tuschl
Patents by adding Dr. Bass as an inventor. Defendants,
who do not believe that Dr. Bass is an inventor of the
4 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT
Tuschl patents, declined that request. As a result, UUtah
initiated this suit in district court, requesting the correc-
tion of the inventorship of the Tuschl Patents under 35
U.S.C. § 256 and asserting various state law claims
against the non-State defendants.
The original and first amended complaints named as
defendants each of the Assignees, including UMass.
UMass moved to dismiss, arguing that because UUtah
and UMass were both arms of the State, the dispute
between them fell within the exclusive original jurisdic-
tion of the Supreme Court. In response, UUtah amended
its complaint, replacing UMass with four UMass officials:
Robert L. Caret (President of UMass), James R. Julian
(Executive Vice President and Chief Operating Officer of
UMass), David J. Gray (Senior Vice President for Admin-
istration, Finance, & Technology and University Treasur-
er of UMass), and James P. McNamara (Executive
Director, Office of Technology Management of UMass).
UUtah stated that its intent in making this amendment
was to avoid the Supreme Court’s exclusive jurisdiction.
The Named Officials moved to dismiss, arguing that
the case fell within the exclusive original jurisdiction of
the Supreme Court and that UUtah’s claims were barred
by sovereign immunity. The district court rejected these
arguments, concluding that relief under § 256 is “prospec-
tive in nature, and does not involve a retroactive remedy.”
Citing Connecticut ex rel. Blumenthal v. Cahill, 217 F.3d
93, 98 (2d Cir. 2000), the court ruled that the case did not
fall within the exclusive original jurisdiction of the Su-
preme Court because UUtah had chosen to sue state
officials, not the State itself. It also reasoned that correc-
tion of inventorship was not a core sovereign interest
sufficient to make this a dispute between States. Accord-
ingly, the district court concluded that it “ha[d] jurisdic-
tion over the action against the UMass state officials
under the Ex parte Young doctrine.”
UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT 5
The Named Officials also argued that UUtah had
failed to name UMass, which they claimed was an indis-
pensable party. The district court rejected this argument
as well, ruling that the suit could proceed without UMass.
The court reasoned that neither UMass nor Defendants
would be prejudiced by a judgment rendered in UMass’s
absence because UMass’s interests would be adequately
represented by the existing defendants, including the
Named Officials. The court also found that the remedy—
an order directing the USPTO to correct inventorship—
would provide adequate relief whether or not UMass was
joined.
Defendants appeal the denial of the motion to dismiss.
This court has jurisdiction under 28 U.S.C. § 1295(a)(1)
and the collateral order doctrine. See Puerto Rico Aque-
duct & Sewer Authority v. Metcalf & Eddy, Inc., 506 U.S.
139, 147 (1993) (holding that immediate appeal of the
denial of a motion for dismissal based on sovereign im-
munity is permissible under the collateral order doctrine).
DISCUSSION
State universities frequently obtain assignments on
patents invented by their faculties and staff, just as
private corporations often obtain assignments on patents
invented by their employees. Unlike a private corporate
assignee or an individual inventor, a state university
typically enjoys sovereign immunity. As a result, a state
university generally may not be sued for infringement,
nor may it be forced to defend against an action for de-
claratory judgment of invalidity or non-infringement. See
A123 Sys., Inc. v. Hydro-Quebec, 626 F.3d 1213, 1220
(Fed. Cir. 2010). But States do not enjoy sovereign im-
munity from suits brought by other States. Texas v. New
Mexico, 482 U.S. 124, 130 (1984). Similarly, States are
free to sue citizens of other States without raising sover-
eign immunity issues.
6 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT
This case requires us to examine the legal complexi-
ties that arise when state universities are on both sides of
a patent dispute. Defendants present three issues for our
consideration. First, they contend that the district court
lacked jurisdiction because, under 28 U.S.C. § 1251(a),
this case falls within the exclusive original jurisdiction of
the Supreme Court. In procedural questions not unique
to patent law, we review a dismissal for lack of subject
matter jurisdiction according to the law of the regional
circuit, which in this case is the First Circuit. See Toxgon
Corp. v. BNFL, Inc., 312 F.3d 1379, 1380 (Fed. Cir. 2002).
The First Circuit reviews a motion to dismiss de novo,
“taking as true the well-pleaded facts contained in the
complaint and drawing all reasonable inferences there-
from in the plaintiff’s favor.” Garrett v. Tandy Corp., 295
F.3d 94 (1st Cir. 2002).
Second, Defendants argue that, as an arm of the State
of Massachusetts, UMass is entitled to Eleventh Amend-
ment immunity. We have held that the question of Elev-
enth Amendment waiver is a matter of Federal Circuit
law. Regents of the Univ. of N.M. v. Knight, 321 F.3d
1111, 1124 (Fed. Cir. 2003). “We review the district
court’s decision on Eleventh Amendment immunity de
novo.” A123 Sys., 626 F.3d at 1219.
And, third, Defendants argue that UMass is an indis-
pensable party and that the case should have been dis-
missed under Fed. R. Civ. P. 19(b). “Whether a party is
indispensable under Rule 19(b) is a matter of regional
circuit law.” Dainippon Screen Mfg. Co. v. CFMT, Inc.,
142 F.3d 1266, 1269 (Fed. Cir. 1998). The First Circuit
reviews Rule 19 decisions for abuse of discretion. Picciot-
to v. Continental Cas. Co., 512 F.3d 9, 14 (1st Cir. 2008).
Having established the applicable standards of review in
this appeal, we address each of these issues in turn.
UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT 7
I. SUPREME COURT JURISDICTION
We begin with Defendants’ argument that this case is
a dispute between States and, as such, falls within the
exclusive original jurisdiction of the Supreme Court. If
Defendants are correct, both this court and the district
court are without jurisdiction over the dispute, and we
must dismiss the case. Because UMass is not a real party
in interest under the Supreme Court’s caselaw, we hold
that this is not a conflict between States subject to the
Court’s exclusive original jurisdiction.
Article III, § 2, cl. 2 of the Constitution provides: “In
all Cases . . . in which a State shall be Party, the
[S]upreme Court shall have original Jurisdiction.” When
a State sues another State, the Court’s jurisdiction is not
only original, but exclusive. 28 U.S.C. § 1251(a) (“The
Supreme Court shall have original and exclusive jurisdic-
tion of all controversies between two or more States.”).
But when a State sues the citizens of another State, the
Supreme Court’s original jurisdiction is concurrent with
the district courts. See id. § 1251(b)(3).
The Court has explained that both its exclusive and
concurrent original jurisdiction is “obligatory only in
appropriate cases.” Illinois v. City of Milwaukee, Wis.,
406 U.S. 91, 93-94 (1972). Whether original jurisdiction is
appropriate depends upon “the seriousness and dignity of
the claim,” whether the “named parties” have another
forum “where appropriate relief may be had,” and wheth-
er the case raises “serious and important” federalism
concerns. 1 Id.; Wyoming v. Oklahoma, 502 U.S. 437, 451
1 The dissent suggests that these considerations on-
ly apply to whether the Court exercises its exclusive
jurisdiction, not to whether it exists. Dissent at 4. In
Illinois, however, the Court considered all these factors
before finding that its exclusive jurisdiction did not exist,
and that original jurisdiction resided in the district court.
8 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT
(1992); Mississippi v. Louisiana, 506 U.S. 73, 77 (1992).
Further, when deciding whether a case is “appropriate,” it
is proper to look beyond the named parties and determine
the real party in interest. Illinois, 406 U.S. at 93-94; In re
State of New York, 256 U.S. 490, 500 (1921); Ex Parte
Ayers, 123 U.S. 443, 487 (1887).
A State is the “real, substantial party in interest,” for
purposes of the Supreme Court’s exclusive jurisdiction, if
it is a “mandatory” or “indispensable” party such that the
decree would operate directly against it and adequate
relief cannot be granted without it. Pennhurst State
School & Hosp. v. Halderman, 465 U.S. 89 (1984) (decree
operated directly against the State when the district court
ordered a state mental hospital closed, its prisoners
moved, and a special master appointed to implement and
monitor the court’s order); see also Dugan v. Rank, 372
U.S. 609, 620 (1963) (decree would enjoin federal officials
such that they would be forced to act contrary to congres-
sional mandate); Cunningham v. Macon & Brunswick R.
R. Co., 109 U.S. 446, 457 (1883) (Georgia was “indispen-
sable” party because no relief could be granted without it);
but see Illinois, 406 U.S. at 97 (State not “mandatory”
party).
For example, a State is the real, substantial party in
interest if the judgment sought would expend itself on the
State’s treasury. See, e.g., Land v. Dollar, 330 U.S. 731,
738 (1947); Ex parte Ayers, 123 U.S. at 492 (1887); Cun-
ningham, 109 U.S. at 455-456. Likewise, if an injunction
against or compelling state administration is sought, the
State is the real party in interest. Pennhurst, 465 U.S. at
106 (instructing a State how to conform to its own law
Illinois, at 93-94, 97-98. Thus, the Court was not merely
declining to exercise its exclusive jurisdiction because, if it
had been, jurisdiction in the lower court would have been
improper.
UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT 9
intrudes on state sovereignty); Corey v. White, 457 U.S.
85, 89 (1982) (discussing restraint of state action); Hawaii
v. Gordon, 373 U.S. 57 (1962) (decree would intrude on
sovereignty because it would require the disposition of
property belonging to the United States) (per curiam).
On the other hand, a State with “some interest of hers
[ ] more or less affected by the decision” but not directly
affected by the court’s decree is not a real party in inter-
est. Cunningham, 109 U.S. at 451, 452 (discussing, inter
alia, when a State may join to assert a property right, but
is not required to). For example, in Illinois, Illinois
sought an abatement of a public nuisance allegedly
caused by the city and county of Milwaukee polluting
Lake Michigan. While Wisconsin’s interests would cer-
tainly have been indirectly affected by a decision abating
the alleged pollution, the Court found that Wisconsin was
not a “mandatory” party. Illinois, 406 U.S. at 97. Ade-
quate relief could be granted without Wisconsin and the
suit was allowed to go forward in district court against
the named defendants, the city of Milwaukee and a Mil-
waukee County Sewage Commission. Id. at 97, 98; see
also Land, 330 U.S. at 738 (U.S. Government is not a
mandatory party if it is not needed to grant full relief).
UUtah, the plaintiff in this case, is an arm of the
State. 2 See Watson v. Univ. of Utah Med. Ctr., 75 F.3d
569, 574-75 (10th Cir. 1996). UUtah originally named
UMass, which is also an arm of the State, see Wong v.
Univ. of Mass., 777 N.E.2d 161, 163 n.3 (Mass. 2002), as a
defendant. When UMass responded by arguing that the
2 The “arm of the State” doctrine bestows Eleventh
Amendment immunity on entities created by state gov-
ernments that operate as instrumentalities of the State.
See Mt. Healthy City Sch. Dist. Bd. of Educ. v. Doyle, 429
U.S. 274, 280 (1977). We assume, without deciding, that
this doctrine is also relevant to the § 1251 inquiry.
10 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT
lawsuit was a dispute between States falling within the
Supreme Court’s exclusive original jurisdiction, UUtah
amended its complaint, replacing UMass with the Named
Officials. As a result, there are no State defendants
named in the second amended complaint; Defendants are
all citizens of a State other than Utah. It follows that this
action, at least on its face, is a proceeding brought by a
State against the citizens of another State as described in
§ 1251(b)(3) (and not a controversy between States under
§ 1251(a)). If this is true, the Supreme Court does not
have exclusive jurisdiction.
The district court, relying on Cahill, concluded that a
State is generally free to “choose between naming a State
as the defendant and suing in the Supreme Court or
naming another proper defendant and suing in a district
court.” Cahill, 217 F.3d at 98. Defendants nevertheless
contend that this case falls within the exclusive original
jurisdiction of the Supreme Court. Defendants assert that
because UUtah seeks the property of UMass, UMass is
the real party in interest, and that UUtah may not “plead
around” the Supreme Court’s exclusive original jurisdic-
tion over disputes between States.
Thus, we must determine if UMass is a real party in
interest for purposes of the Supreme Court’s exclusive
jurisdiction under § 1251(a). The First Circuit has not yet
addressed this issue. As noted, the district court based its
decision on Cahill, a Second Circuit case that squarely
addressed whether § 1251(a) deprives the district courts
of jurisdiction over actions brought by one State against
officials of another.
At issue in Cahill was a New York law allowing resi-
dent permit holders to trap lobsters in a certain area but
prohibiting non-resident permit holders from doing the
same. Id. at 96. The State of Connecticut, acting as
parens patriae, brought suit in federal district court to
enjoin New York state officials from enforcing the law. Id.
UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT 11
Although Connecticut had sued New York officials, not
the State of New York, the district court “ruled that the
State of New York was the sole real defendant-party in
interest and dismissed the suit for lack of subject matter
jurisdiction because the suit was a ‘controvers[y] between
two or more States’ within the Supreme Court’s exclusive
original jurisdiction.” Id.
A divided panel of the Second Circuit reversed. The
majority concluded that “a plaintiff-State may decide
whether or not to name another State as a defendant, and
to enjoy (or suffer) the jurisdictional consequences of that
decision.” Id. at 98. The majority reviewed the Supreme
Court’s caselaw and concluded that a State is the real
party in interest when “(1) the alleged injury was caused
by actions specifically authorized by State law, and (2) the
suit implicates the State’s core sovereign interests.” Id. at
99. The majority derived its core sovereign interests
inquiry from the Supreme Court’s focus on “the serious-
ness and dignity of the claim” and cases that “implicate
serious and important concerns of federalism.” Id. (quot-
ing Mississippi, 506 U.S. at 77 and Wyoming, 502 U.S. at
451. The majority provided several examples of core
sovereign interests, including boundary disputes, disputes
over water rights, and disputes over contracts between
states. See id. at 100. A look to the Supreme Court’s
caselaw identifies further examples. See, e.g., Pennhurst,
465 U.S. at 106 (instructing state officials how to conform
their conduct to state law “conflicts directly with the
principles of federalism.”). The majority concluded that
Connecticut’s suit did not challenge New York’s core
sovereign interests, but instead “challenge[d] as unconsti-
tutional the manner in which New York has exercised its
unchallenged power to regulate its waters.” Id. at 104.
Accordingly, the majority concluded that jurisdiction was
appropriate in the district court.
Circuit Judge Sotomayor dissented. In her view, the
State of New York was the real party in interest. Id. at
12 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT
107 (Sotomayor, J., dissenting) (“[W]hatever ‘considerable
freedom’ the majority supposes a plaintiff-State possesses
in [choosing defendants] is still constrained by the re-
quirement that courts look beyond the form of the plead-
ings and determine who is the real party being sued.”).
According to the dissent, “relief sought nominally against
an officer is in fact against the sovereign if ‘the effect of
the judgment would be to restrain the Government from
acting, or to compel it to act.’” Id. at 106 (Sotomayor, J.,
dissenting) (citing Pennhurst, 465 U.S. 89, 101 & n.11;
Hawaii, 373 U.S. at 58; and Dugan, 372 U.S. at 620). To
Judge Sotomayor, there could be “no serious doubt” that
although the action had been brought against state offi-
cials, it was an action by Connecticut against New York.
Id. at 106.
The majority and dissent in Cahill focused on differ-
ent aspects of Supreme Court caselaw when deciding
whether to disregard a plaintiff-State’s decision to name
state officials as defendants (under § 1251(b)(3)) and treat
the suit instead as a controversy between States (under §
1251(a)). We need not predict the First Circuit’s focus
because, overall, the Supreme Court’s caselaw does not
require us to treat this case as a dispute between States.
First, UMass is not a real party in interest under the
Cahill majority approach. The majority concluded that a
State whose officers’ action is challenged must be consid-
ered the real party in interest where “(1) the alleged
injury was caused by actions specifically authorized by
State law, and (2) the suit implicates the State’s core
sovereign interests.” Cahill, 217 F.3d at 99. Assuming
arguendo that the first prong of this test is met, Defend-
ants have not identified a core sovereign interest of Mas-
sachusetts in this case. The Named Officials are
defendants only in counts 1-4, which seek correction of
inventorship under § 256, and count 5, which seeks de-
claratory judgment that Dr. Bass is the sole or a joint
UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT 13
inventor of the Tuschl patents. Thus, with respect to
UMass, only inventorship is at issue.
We hold that a State has no core sovereign interest in
inventorship. The inventors of a patent are “the individ-
ual or, if a joint invention, the individuals collectively who
invented or discovered the subject matter of the inven-
tion.” 35 U.S.C. § 100(f). It is axiomatic that inventors
are the individuals that conceive of the invention:
Conception is the touchstone of inventorship,
the completion of the mental part of invention. It
is the formation in the mind of the inventor, of a
definite and permanent idea of the complete and
operative invention, as it is hereafter to be applied
in practice. Conception is complete only when the
idea is so clearly defined in the inventor’s mind
that only ordinary skill would be necessary to re-
duce the invention to practice, without extensive
research or experimentation. [Conception] is a
mental act . . . .
Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223,
1227-28 (Fed. Cir. 1994) (internal quotation marks and
citations omitted). To perform this mental act, inventors
must be natural persons and cannot be corporations or
sovereigns. And because States cannot be inventors, it
follows that inventorship is not a core sovereign interest
of the States.
UMass and the dissent confuse the issue by repeated-
ly framing the dispute as one of ownership, not inventor-
ship. Although “[q]uestions of patent ownership are
distinct from questions of inventorship,” they are closely
related: “[E]ach co-inventor presumptively owns a pro
rata undivided interest in the entire patent, no matter
what their respective contributions.” Ethicon, Inc. v. U.S.
Surgical Corp., 135 F.3d 1456, 1465 (Fed. Cir. 1998)
(footnote omitted). But State ownership of patent rights
is not akin to State ownership of water rights, natural
14 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT
resources, or other property issues that “implicate serious
and important concerns of federalism” and rise to the
level of core sovereign interests. Cahill, 217 F.3d at 99.
Accordingly, even if UMass and the dissent were correct
that ownership was at issue in this case, that fact alone
would not require us to consider UMass a real party in
interest under the Cahill majority approach.
Second, UMass is not a real party in interest under
the Cahill dissent’s approach. As noted, the dissent
focused on the Supreme Court’s language from Dugan,
concluding that “relief sought nominally against an officer
is in fact against the sovereign if ‘the effect of the judg-
ment would be to restrain the Government from acting, or
to compel it to act.’” Id. at 106 (Sotomayor, J., dissenting)
(emphasis added); Dugan, 372 U.S. at 620. A judgment
ordering the Director of the USPTO to correct inventor-
ship will not require or restrain UMass from acting.
Neither UMass nor its officials are required to cooperate
with UUtah in petitioning for the correction of inventor-
ship under § 256(a). Indeed, § 256(b) exists to provide a
means for correcting inventorship when a party does not
consent to cooperate under § 256(a), but a decree under §
256(b) does not restrain the State, nor does it compel the
State to act—rather, it may cause the Director of the
USPTO to act. Thus, should UUtah prevail, the district
court’s judgment would not directly restrain or compel
UMass. See Pennhurst, 465 U.S. at 117.
A wider view of the Supreme Court cases addressing
the real party in interest further supports this conclusion.
UMass is not an “indispensable” or “mandatory” party
because the district court is fully capable of granting the
relief UUtah requests without UMass. See Illinois, 406
U.S. at 97-98; Cunningham, 109 U.S. at 451; Ex parte
Ayers, 123 U.S. at 489 (“if the state is not a party there is
no party against whom the decree can be made”) (quoting
Governor of Georgia v. Madrazo, 1 Pet. 110, 123-124.
Here, the district court can grant UUtah all the relief it
UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT 15
seeks by directing the USPTO to correct the inventorship
of the Tuschl Patents. 3 While certain of UMass’ interests
may be “more or less affected by the decision,” the court’s
decree will not deplete the state treasury, compel UMass
to act, or instruct UMass how to conform to state law.
Cunningham, 109 U.S. at 451; Pennhurst, 456 U.S. at
106; Land, 330 U.S. at 738; Ex Parte Ayers, 123 U.S. at
492. Indeed, events aside from the court’s judgment may
later affect UMass’ interests but this is not “the decree
operat[ing] against UMass.” Pennhurst, 465 U.S. at 101,
117 (“here[,] the relief sought and ordered has an impact
directly on the state itself”) (emphasis added); Hawaii,
373 U.S. at 58. While UMass would be a proper party in
this case, it is not required for the relief UUtah seeks.
Illinois, 406 U.S. at 97-98.
In sum, whether we focus on the Cahill majority or
dissent, or take a wider view of the Supreme Court’s
caselaw, UMass is not a real party in interest here. 4
3 UUtah also requests that the court assign it all
rights to the Tuschl patents. However, should UUtah be
entitled to these rights, then a decree correcting inven-
torhsip would provide all the relief it needs to obtain such
rights.
4 Contrary to the dissent, our decision does not
strip the Supreme Court of its discretion to exercise its
exclusive jurisdiction nor does it contradict the plain
language of § 1251(a). Dissent at 4. As the dissent
acknowledges, we must first determine whether the state
(i.e. UMass) is a real substantial party in interest. Dis-
sent at 2. Because it is not, this is not a “controvers[y]
between two or more states” and the Court’s exclusive
jurisdiction is not triggered. 28 U.S.C. § 1251(a).
16 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT
II. SOVEREIGN IMMUNITY
The district court also considered whether sovereign
immunity barred UUtah’s suit. And, if so, whether the Ex
Parte Young, 209 U.S. 123 (1908) exception to sovereign
immunity applied. The Eleventh Amendment provides:
“The Judicial power of the United States shall not be
construed to extend to any suit in law or equity, com-
menced or prosecuted against one of the United States by
Citizens of another State, or by Citizens or Subjects of any
Foreign State.” While the Supreme Court has interpreted
this amendment as encompassing a broad principle of
sovereign immunity Edelman v. Jordan, 415 U.S. 651,
662-63 (1974), sovereign immunity “applies only to suits
by citizens against a State.” Texas, 482 U.S. at 130;
Cahill, 217 F.3d at 101; but see Virginia Office for Prot. &
Advocacy v. Stewart, 131 S. Ct. 1632, 1638 (2011). Be-
cause this case does not involve a suit by citizens against
a State, there is no sovereign immunity issue here.
III. RULE 19
Defendants argue that UUtah’s complaint should be
dismissed for failure to join UMass, which Defendants
contend is an indispensable party under Fed. R. Civ. P.
19. Whether to dismiss under Rule 19 is a two-step
inquiry: first, a party must be joined if feasible under
Rule 19(a), and second, the party must be indispensable
under Rule 19(b). See United States v. San Juan Bay
Marina, 239 F.3d 400, 405 (1st Cir. 2001). The parties do
not dispute that, as a co-owner of the Tuschl Patents,
UMass is required to be joined if feasible. At issue is
whether UMass is indispensable. 5
5 The dissent notes that parties with an “economic
stake” in a patent’s validity are proper defendants in a §
256 suit. Dissent at 3, 7; citing Chou v. University of
Chicago, 254 F.3d 1347, 1359-60 (Fed. Cir. 2001). There
is no dispute that UMass could properly be named as a
UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT 17
A
Before we reach the merits of the district court’s
ruling that UMass is not an indispensable party, we
address our jurisdiction. Defendants have asked us to
review this issue under the doctrine of pendent jurisdic-
tion. Such requests are generally disfavored and are
granted only in extraordinary circumstances. See Falana
v. Kent State Univ., 669 F.3d 1349, 1360 (Fed. Cir. 2012).
“These extraordinary circumstances may be present when
the nonappealable decision is ‘inextricably intertwined’
with the appealable decision or when review of the non-
appealable decision is ‘necessary to ensure meaningful
review” of the appealable decision.’” Id. at 1361 (quoting
Swint v. County Chambers Comm’n, 514 U.S. 48, 51
(1995)). Defendants assert that the Rule 19 judgment is
inextricably intertwined with the sovereign immunity
issues.
The First Circuit has held that “joinder of a Rule 19
indispensable party may not be waived,” and has enter-
tained the question even when it was raised for the first
time on appeal. See Martinez Moll v. Levitt & Sons of
Puerto Rico, Inc., 583 F.2d 565, 572 (1st Cir. 1978). This
court has previously concluded that First Circuit law
permits performing the Rule 19(b) analysis for the first
time on appeal. A123 Sys., 626 F.3d at 1221; see also
Bacardi Int’l Ltd. V. V. Suarez & Co., No. 12-1032, 2013
WL 1919578, at *5 (1st Cir. May 8, 2013) (declining to
remand for the district court to perform a Rule 19 analy-
sis in the first instance when the record was adequate to
decide the issue on appeal). On the foregoing basis, we
proceed with our analysis of the Rule 19(b) issue.
defendant in this action but the question is whether it is
an indispensable party for purposes of Rule 19(b).
18 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT
B
When a party that is required to be joined if feasible
under Rule 19(a) cannot be joined, the court must deter-
mine whether, in equity and good conscience, the action
should proceed among the existing parties or should be
dismissed. Fed. R. Civ. P. 19(b). The factors for the court
to consider include:
(1) the extent to which a judgment rendered in the
person’s absence might prejudice that person or
the existing parties;
(2) the extent to which any prejudice could be
lessened or avoided by:
(A) protective provisions in the judgment;
(B) shaping the relief; or
(C) other measures;
(3) whether a judgment rendered in the person’s
absence would be adequate; and
(4) whether the plaintiff would have an adequate
remedy if the action were dismissed for non-
joinder.
Id. In weighing these factors, courts “should keep in mind
the policies that underlie Rule 19, ‘including the public
interest in preventing multiple and repetitive litigation,
the interest of the present parties in obtaining complete
and effective relief in a single action, and the interest of
absentees in avoiding the possible prejudicial effect of
deciding the case without them.’” Picciotto, 512 F.3d at
15-16 (quoting Acton Co. v. Bachman Foods, Inc., 668
F.2d 76, 78 (1st Cir. 1982)).
Defendants cite several cases for the proposition that
a “patent owner is an indispensable party who must be
joined.” Appellant’s Br. 43 (quoting Alfred E. Mann
Found. For Sci. Research v. Cochlear Corp., 604 F.3d
UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT 19
1354, 1359 (Fed. Cir. 2010)). But these cases deal with
standing to bring suit, not with indispensability under
Rule 19(b). See Alfred E. Mann, 604 F.3d at 1358-59. To
be sure, these cases strongly support the conclusion that
patent owners are required to be joined if feasible under
Rule 19(a). See Aspex Eyewear, Inc. v. Miracle Optics,
Inc., 434 F.3d 1336, 1344 (Fed. Cir. 2006) (“For the same
policy reasons that a patentee must be joined in any
lawsuit involving his or her patent, there must be joinder
of any exclusive licensee.”). But they do not create a per-
se rule that patent owners are automatically indispensa-
ble parties—there is no patent-specific exception to Rule
19(b). As this court recognized in Alfred E. Mann, when a
necessary patent owner is not joined, even when Rule
19(a) is satisfied, the court must still perform the inquiry
under Rule 19(b) to determine whether that owner is
indispensable. 604 F.3d at 1363; see also Dainippon, 142
F.3d at 1272 (“[E]ven if [a patentee] is a necessary party
under Rule 19(a) because it would be prejudiced by a
holding of invalidity of its patent, this prejudice does not
automatically make CFMT indispensable.” (footnote
omitted)).
C
Here, the district court examined each of the four
Rule 19(b) factors and concluded that UMass was not
indispensable. Although First Circuit law applies to the
question of joinder under Rule 19 in this case, the district
court and both parties on appeal relied primarily on
Dainippon, a Federal Circuit case applying Ninth Circuit
joinder law. The failure to apply First Circuit law does
not automatically compel us to vacate and remand this
decision, however, for this is not a case where “the ab-
sence of independent analysis (or any analysis at all) is a
reason for remand.” In re Olympic Mills Corp., 477 F.3d
1, 9 (1st Cir. 2007). Accordingly, we will not disturb the
district court’s decision if its reliance on Dainippon is
consistent with First Circuit joinder law. See Rosario-
20 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT
Urdaz v. Rivera-Hernandez, 350 F.3d 219, 221 (1st Cir.
2003) (“[A]n abuse of discretion occurs when the district
court considers improper criteria, ignores criteria that
deserve significant weight, or gauges only the appropriate
criteria but makes a clear error of judgment in assaying
them.”). As we explain below, the district court consid-
ered the proper criteria and correctly weighed those
criteria in light of the record, and we therefore conclude
that its reliance on Dainippon did not transform an
otherwise proper decision into an abuse of discretion.
In Dainippon, a manufacturer sought declaratory
judgment of invalidity and non-infringement against a
patent holding company and its licensee in the District
Court for the Northern District of California. 142 F.3d at
1267-68. The patentee, CFM, had created a wholly owned
subsidiary, CFMT, as a holding company for its patent.
CFM assigned its patents to CFMT, which then licensed
them back exclusively to CFM. Id. The district court
concluded that it lacked personal jurisdiction over CFMT,
the holding company, because CFMT had no ties to Cali-
fornia. The court also concluded that CFMT, as the owner
of the patent that the manufacturer sought to invalidate,
was an indispensable party under Rule 19(b). Id. at
1268-69. Accordingly, the court dismissed the suit.
On appeal, this court reversed. Relying on Ninth Cir-
cuit law, the court reasoned that prejudice is mitigated
when an absent party is adequately represented, and that
the presence in the suit of the assignee’s parent company
and sole owner was adequate representation. Id. at 1272.
This was especially true where the parent company
effectively controlled the holding company and the two
had jointly sought legal assistance in defending their
patents. Id. The court found the second factor, the ability
to shape relief to minimize prejudice, to have little rele-
vance in the absence of prejudice. Id. at 1272-73. The
court found the third factor, adequacy of the judgment, to
be satisfied because a declaratory judgment did not
UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT 21
require an affirmative act by the absent holding company;
in other words, relief was not hollow absent joinder. Id.
at 1273. In light of the strong showing on the first three
factors, the court gave little weight to the possibility that
all parties might be able to be joined in a different district
court. Id.The facts of the instant case support a conclusion of
no indispensability even more strongly than in Dain-
ippon. On the first factor, the district court concluded
that UMass’s interests were adequately represented by
Defendants—including all of the Tuschl Patent owners
except UMass—each of whom stands to lose if inventor-
ship changes. In contrast, no owners were joined in
Dainippon. Also as in Dainippon, Defendants are jointly
represented by legal counsel in protecting the Tuschl
Patents. In light of these facts, the district court saw no
prejudice, and therefore concluded that the second factor
had little weight. Additionally, the district court’s finding
on this prong is strongly supported by the settlement
agreement which UMass entered into and handed sole
and exclusive control of this suit over to Alnylam, which is
a party to this suit. See Oral Arg. at 13:07-13:45, 26:45-
27:15.
As to the third factor, an order directing the USPTO
to correct inventorship would not be insufficient in the
absence of UMass, just as findings of invalidity or non-
infringement would not have been hollow in Dainippon.
Defendants argue that such an order would not be bind-
ing on UMass. But the order would be binding on the
USPTO, and Defendants do not offer any reason why the
USPTO would decline to change inventorship, should
such an order ultimately be issued. Indeed, were the
order to issue, UUtah would receive all of the relief it
requests.
Finally, we agree with the district court that the pos-
sibility that the Supreme Court would accept original
22 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT
jurisdiction in this case weighs only slightly against
UUtah. Although we do not predict whether the Court
would accept such a case, we note that it does so only
rarely. See Lawrence Baum, The Supreme Court 157
(10th ed. 2010) (observing that out of 70 cases heard by
the Court in the 2007 term, only one fell under the Court’s
original jurisdiction). Accordingly, the availability of
another forum in this case is not particularly strong.
Certainly, it is less compelling than in Dainippon, where
this court presumed that the absent party could be joined
in the district of Delaware. Id. at 1273. In any event, the
district court concluded that “this factor [wa]s significant-
ly outweighed” by the other three. We cannot say that
this conclusion was an abuse of its discretion.
Although we conclude that the district court did not
abuse its discretion in determining that UMass was not
indispensable on these facts, we acknowledge that certain
of these facts may change on remand. For example, if an
unforeseeable conflict of interest arises which negates
UMass’s assignment to Alnylam of sole and exclusive
control over this lawsuit, UMass may be free to renew this
motion. See Charles Alan Wright et al., Federal Practice
and Procedure § 1609, at 128-29 (3d ed. 2001) (“The court
is . . . free to reconsider a previously decided question of
indispensability if there is a showing of changed circum-
stances.”). Rule 19 determinations are fact intensive and
should be resolved by the district court in the first in-
stance, not by this court in advance.
CONCLUSION
We affirm the district court’s ruling that this is not a
dispute between States falling within the exclusive origi-
nal jurisdiction of the Supreme Court. UUtah was free to
choose between filing this suit in the Supreme Court and
filing in federal district court. We also affirm the judg-
ment that UMass is not an indispensable party.
AFFIRMED
UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT 23
COSTS
Each party shall bear its own costs.
United States Court of Appeals
for the Federal Circuit
______________________
UNIVERSITY OF UTAH,
Plaintiff-Appellee,
v.
MAX-PLANCK-GESELLSCHAFT ZUR
FORDERUNG DER WISSENSCHAFTEN E.V., MAX-
PLANCK-INNOVATION GMBH, WHITEHEAD
INSTITUTE FOR BIOMEDICAL RESEARCH,
MASSACHUSETTS INSTITUTE OF TECHNOLOGY,
AND ALNYLAM PHARMACEUTICALS, INC.,
Defendants-Appellants,
AND
ROBERT L. CARET, JAMES R. JULIAN, JR.,
DAVID J. GRAY, AND JAMES P. MCNAMARA,
Defendants-Appellants.
______________________
2012-1540, -1541, -1661
______________________
Appeal from the United States District Court for the
District of Massachusetts in No. 11-CV-10484, Judge
Patti B. Saris.
______________________
MOORE, Circuit Judge, dissenting.
The majority erroneously holds that a patent-
ownership dispute between two state universities is not a
2 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT
“controversy between two or more States.” It then com-
pounds this error and holds that a patent owner is not an
indispensable party to an action that seeks to reassign
title to the patents-in-suit. I respectfully dissent.
I. Subject Matter Jurisdiction
The district court lacks jurisdiction over UUtah’s
claims against the UMass Officials because those claims
raise a dispute between two States, Utah and Massachu-
setts. Article III of the U.S. Constitution vests the Su-
preme Court with original jurisdiction over cases in which
a State is a party. As § 1251(a) expressly states: “The
Supreme Court shall have original and exclusive jurisdic-
tion of all controversies between two or more States.”
There is no dispute that UUtah and UMass are instru-
ments of Utah and Massachusetts, respectively, and that
a suit between those institutions could only be brought in
the Supreme Court. See Maj. Op. at 9; Arkansas v. Texas,
346 U.S. 368, 370–71 (1953). The majority, however,
concludes that § 1251(a) does not apply here because
UUtah elected to sue the UMass Officials rather than
UMass. That conclusion is incorrect.
To determine if a suit implicates the Supreme Court’s
exclusive original jurisdiction, we look “behind and be-
yond the legal form” of the claim and determine “whether
the State is indeed the real party in interest.” Arkansas
v. Texas, 346 U.S. at 371. The majority agrees with this
general proposition but holds that the UMass Officials,
not UMass, are the real parties in interest. I disagree.
This case involves a dispute between UMass and
UUtah over who owns the rights to the Tuschl II patents.
UMass is the assignee of the Tuschl II patents and UUtah
“wants to own the patents.” Oral Arg. at 43:45–43:54.
UUtah is pursuing that interest through a correction of
inventorship claim under 35 U.S.C. § 256 and a corre-
sponding request for an order that UUtah owns the
patents. J.A. 134–36, 141–43. UUtah claims that one of
3 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT
its faculty members, Dr. Bass, invented the subject mat-
ter claimed in the Tuschl II patents. J.A. 118–34. It
alleges that Dr. Bass’s resulting ownership interest flows
to UUtah by “operation of law” via an assignment obliga-
tion. Id.; Oral Arg. 42:44–43:10.
UUtah also alleges in its complaint that it “should be
the sole owner or an owner” of the Tuschl II patents. J.A.
134. It specifically requests that the court “order assign-
ment of all right title and interest” in the patents to
UUtah. J.A. 142. Indeed, the majority recognizes (1) that
UUtah specifically requested that the court assign it all
rights to the Tuschl II patents and (2) that UUtah will
obtain the rights to the patents if it prevails on its correc-
tion of inventorship claims. Maj. Op. at 15 n.3. This is a
dispute about ownership, plain and simple.
UUtah cannot recast the nature of this dispute by su-
ing the UMass Officials as stand-ins for UMass. Indeed,
the majority never holds that the UMass Officials have
any interest in this proceeding. Nowhere does the majori-
ty suggest that the UMass Officials are “parties con-
cerned” that may be subject to a correction of inventorship
action under § 256(b). See Chou v. Univ. of Chi., 254 F.3d
1347, 1359–60 (Fed. Cir. 2001) (holding that parties with
an “economic stake” in the patent are proper defendants
in a § 256(b) action). The UMass Officials do not have a
real interest in this action.
Section 1251(a) contains “uncompromising language”:
the Supreme Court has original and exclusive jurisdiction
over “all controversies between two or more States.”
Mississippi v. Louisiana, 506 U.S. 73, 77 (1992). The
majority errs when it concludes that § 1251(a) does not
apply to this dispute because the “State has no core
sovereign interest” in inventorship or patent ownership.
Maj. Op. at 13–15. The majority’s “core sovereign inter-
ests” test is at odds with the plain language of the statute,
which contemplates “all controversies” between states fall
4 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT
within 1251, not just those involving core sovereign
interests. There is simply no basis to limit the statute in
such a way.
Moreover, requiring a core sovereign interest to impli-
cate the Supreme Court’s exclusive jurisdiction erodes the
Court’s discretion to decide which controversies it will
hear. The existence of the Supreme Court’s exclusive
jurisdiction and its discretion to exercise that jurisdiction
are separate concepts. The Court’s exclusive original
jurisdiction extends to “all controversies between two or
more States.” 28 U.S.C. § 1251(a). The Court, however, is
not required to exercise its jurisdiction over every contro-
versy. The Court tends to exercise its jurisdiction spar-
ingly, depending upon the nature of the interest of the
complaining State, the seriousness and dignity of the
claim, and the availability of another original forum to
resolve the dispute. Mississippi v. Louisiana, 506 U.S. at76–77. The concept of a “core sovereign interest” has
roots in opinions that address whether the Supreme Court
will decide to exercise its jurisdiction over a dispute, not
whether the Court’s exclusive original jurisdiction over
the controversy exists. See id. at 77; Texas v. New Mexico,
462 U.S. 554, 570, 571 n.18 (1983); Connecticut ex rel.
Blumenthal v. Cahill, 217 F.3d 93, 109 (2d Cir. 2000)
(collecting cases). The majority’s conflation of those two
concepts strips the Supreme Court of its discretion to
decide if a case is sufficiently serious to exercise jurisdic-
tion over it. It reallocates that power to the lower
courts—who will decide which subset of cases—those
implicating core sovereign interest—will be presented to
the Supreme Court. 1
1 The majority baldly asserts that issues of patent
ownership and inventorship are not sufficiently grand for
the Supreme Court to resolve in the first instance. That
is not our decision to make. It is for the Supreme Court to
5 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT
The majority finds support for its decision in the
Second Circuit’s split decision in Cahill. With all due
respect, even if we adopt the flawed logic of the majority
in Cahill, this case would still fall within the Supreme
Court’s exclusive jurisdiction in § 1251. The majority
correctly recognizes that, generally, a State is the real
party in interest if “the effect of the judgment would be to
restrain the Government from acting, or compel it to act.”
Maj. Op. at 14 (quoting Cahill, 217 F.3d at 106). But the
majority nevertheless concludes that UMass is not the
real party in interest because a judgment to correct inven-
torship “will not require or restrain UMass from acting.”
Id. at 13. This is not correct.
A judgment in UUtah’s favor will restrain UMass’s
ability to act. If successful, UUtah will be declared sole
owner of the Tuschl II patents and UMass will have no
interest in them. UMass will not be able to license or
assign the patents. And UUtah will be able to exclude
UMass from practicing the inventions claimed in the
patents. Patent rights are the quintessential right to
restrain. The effect of this judgment will be to prevent
UMass from exploiting the Tuschl II patents or the tech-
nologies they cover. This certainly “restrain[s] the Gov-
ernment from acting.”
UUtah alternatively requests that Dr. Bass be found
to be a co-inventor. A finding that Dr. Bass is a co-
itself decide. And I point out that Universities earn over
a billion dollars annually from licensing their inventions.
Universities Report $1.8-Billion in Earnings on Inventions
in 2011, The Chronicle of Higher Education,
http://chronicle.com/article/University-Inventions-
Earned/133972. Ownership of the Tuschl II patents has
significant consequences for Utah and Massachusetts: the
patents “have generated hundreds of millions of dollars in
revenue.” J.A. 134.
6 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT
inventor of the Tuschl II patents will result in UUtah co-
owning those patents. The effect of the judgment would
be that UUtah could practice or license the patents with-
out UMass’s consent and without having to account to
UMass. See 35 U.S.C. § 262. The judgment would thus
restrain UMass from asserting its rights in the Tuschl II
patents against UUtah or any of UUtah’s licensees.
Again, this restrains UMass from acting.
The majority ignores these effects on UMass. Without
explanation, the majority asserts that UMass will only be
“more or less affected by the decision” and that transfer of
the Tuschl II patents to UUtah will “not deplete the state
treasury.” Maj. Op. at 15. This is incorrect. A correction
of inventorship by the PTO will give UUtah an ownership
interest in the Tuschl II patents by operation of law and
dilute or revoke UMass’s property interest. Indeed, as the
majority also recognizes, UUtah expressly asks the court
to order the reassignment of the patents to UUtah. The
central effect of a judgment in UUtah’s favor will be to
deplete the assets of the current owners of the Tuschl II
patents, one of whom is UMass. UMass is thus the real
party in interest in this case.
This is a dispute between two state universities over
who owns a valuable patent portfolio—a dispute over
property ownership. As undesirable as it may be, we are
bound to follow the plain language of § 1251(a): “The
Supreme Court shall have original and exclusive jurisdic-
tion of all controversies between two or more States.” It is
up to the Supreme Court to decide if it wants to exercise
its exclusive jurisdiction over this controversy. We should
not contort the statute to avoid a perceived injustice 2 that
2 We note that Dr. Bass and UUtah could have pro-
tected their rights to the invention claimed in the Tuschl
II patents without invoking the Supreme Court’s exclu-
sive original jurisdiction. Dr. Bass could have filed her
7 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT
would result if the Court declined to exercise jurisdiction
over UUtah’s claims.
UUtah initiated an action that seeks to obtain
UMass’s interest in the Tuschl II patents. That is a
controversy between two States and can only be brought
in the Supreme Court. Accordingly, we should reverse the
district court’s decision that it had jurisdiction over
UUtah’s claims against the UMass Officials.
II. Indispensable Party
The majority’s holding that UMass is not an indispen-
sable party to this action is incorrect. We have held that
when a plaintiff brings a declaratory judgment action
seeking to invalidate a patent or hold it not infringed, the
patentee is both a necessary and indispensable defendant
in that action. A123 Sys., Inc. v. Hydro-Quebec, 626 F.3d
1213, 1217–19, 1220–22 (Fed. Cir. 2010); Enzo APA &
Son, Inc. v. Geapag A.G., 134 F.3d 1090, 1094 (Fed. Cir.
1998). It would be nonsensical to suggest that all patent
owners must be joined in a suit seeking to invalidate the
patent, but they need not be joined in a suit over patent
ownership. Indeed, § 256(b) requires a court, before it
orders a correction of inventorship, to provide “notice and
hearing of all parties concerned,” i.e., those with an “eco-
nomic stake” in the patent. Chou, 254 F.3d at 1359–60.
We should apply our general rule that all co-owners must
be joined in an action that affects their patent. See Ethi-
con, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1467 (Fed.
Cir. 1998).
The majority instead holds that UMass is not an in-
dispensable party because UUtah joined “all of the Tuschl
Patent owners except UMass,” each of whom are “jointly
represented by legal counsel.” Maj. Op. at 21. It is not
own patent application and provoked an interference
proceeding at the PTO.
8 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT
enough that UMass and the named defendants “share the
same overarching goal” of defeating UUtah’s inventorship
and ownership claims. A123 Sys., 626 F.3d at 1221(holding that absent patentee was an indispensable party
when the named party had “overlapping” but not “identi-
cal” interests).
The majority deviates from our longstanding re-
quirement that all patent owners be joined, citing an
exception created in Dainippon Screen Manufacturing Co.
v. CFMT, Inc., 142 F.3d 1266 (Fed. Cir. 1998). It is true
that, like Dainippon Screen, the named defendants here
are represented by common counsel. But the majority
omits the “highly relevant” facts from Dainippon Screen—
the absent party was a wholly-owned subsidiary of the
named party and was created by the named party to
enforce the patents-in-suit. 142 F.3d at 1267–68, 1272–
73. We allowed the suit to go forward because “the par-
ties’ interests in the asserted patents were not just com-
mon, but identical.” A123 Sys., 626 F.3d at 1221(discussing Dainippoin Screen).
There is no party in this suit which represents
UMass’s interest in the Tuschl II patents. Other defend-
ants also have an interest in the patents, but they do not
represent UMass’s interest. Indeed, their interests may
well diverge. For example, the non-UMass defendants
may choose to settle with UUtah in a way that diminishes
UMass’s rights, such as stipulating that Dr. Bass is the
sole inventor of the Tuschl II patents in exchange for
ownership interests in the patents. That risks extinguish-
ing UMass’s rights to the patents without UMass partici-
pating in the lawsuit.
The majority further claims that defendant Alnylam
can represent UMass’s interest because UMass “handed
sole and exclusive control of this suit over to Alnylam.”
Maj. Op. at 21. That right, however, is conditional. If
there is a conflict of interest, Alnylam loses its right to
9 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT
control UMass’s defense. Id. The agreement thus con-
templates that Alnylam and UMass may not have identi-
cal interests. Because UMass does not have identical
interests with any of the named defendants, it is an
indispensable party in this case. I dissent from the major-
ity’s contrary holding.