No Exclusive Supreme Court Jurisdiction In Inventorship Dispute Where State Officials, Not State, Were Named Defendants

In University of Utah v. Max-Plank-Gesellschaft zur Forderung der Wissenschaften e.V., Nos. 12-1540, -1541, -1661 (Fed. Cir. Aug. 19, 2013), the Federal Circuit affirmed the district court's denial of a motion to dismiss by four named officials ("Named Officials") of the University of Massachusetts ("UMass"), holding that the Supreme Court's exclusive jurisdiction was not triggered, that the claims were not barred by sovereign immunity, and that UMass was not an indispensable party.

The University of Utah ("UUtah"), believing that its employee, Dr. Brenda Bass, should have been named as a sole or joint inventor of U.S. Patent Nos. 7,056,704 and 7,078,196 (collectively "the Tuschl patents"), requested correction of the inventorship of the Tuschl patents under 35 U.S.C. § 256. Originally, UUtah named as defendants a number of non-State defendants, including Max-Planck-Gesellschaft zur Forderung der Wissenschaften e.V. ("Max-Planck"), and also named UMass as a defendant. 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 jurisdiction of the Supreme Court. UUtah subsequently amended its complaint and replaced UMass with the four named UMass Named Officials, noting 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. In rejecting the Named Officials' arguments, the district court ruled that the case did not fall within the exclusive original jurisdiction of the Supreme Court because UUtah had chosen to sue state officials, not the State itself, and also reasoned that correction of inventorship was not a core sovereign interest sufficient to make this a dispute between States. The district court also dismissed the Named Officials' argument that UMass was an indispensable party, because 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, and that the remedy—an order directing the PTO to correct inventorship—would provide adequate relief whether or not UMass was joined.

On appeal, the Federal Circuit first held that this case was not a conflict between States subject...