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District Court Denies Motion to Dismiss University of Utah Lawsuit over Tuschl IP


A Massachusetts District Court this week denied motions to dismiss an intellectual property-ownership lawsuit filed by the University of Utah against Alnylam Pharmaceuticals and several University of Massachusetts officials, among others, telling the defendants that they have not provided sufficient reasons why the litigation should be halted.

As a result, the dispute over whether University of Utah researcher Brenda Bass should be named as an inventor of a key RNAi technology, along with several Alnylam co-founders, will proceed.

The dispute began a little over a year ago when the University of Utah sued UMass, the Max Planck Institute, Alnylam Pharmaceuticals, the Massachusetts Institute of Technology, and the Whitehead Institute for Biomedical Research for allegedly denying Bass inventorship on the so-called Tuschl-II IP patents and applications (GSN 3/31/2011).

The IP, named for co-inventor and one-time Max Planck researcher Thomas Tuschl, claims conventional 21-to-23 nucleotide-long siRNAs with 3' overhangs. Also listed as inventors are UMass' Phillip Zamore and MIT's Phillip Sharp, both of whom were previously at Whitehead, as well as MIT's David Bartel. All of the inventors are Alnylam co-founders.

In mounting a defense, UMass argued that since both it and the University of Utah are state institutions, they should be considered US states, which would make the Supreme Court the only venue where the litigation could be heard (GSN 11/3/2011). Rather than press the issue, the University of Utah later dropped UMass from the lawsuit and instead named several of the institution's top officials are defendants (GSN 12/6/2011).

Seeking to counter the plaintiff's legal gambit, the defendants argued that UMass is an “indispensable party” to the litigation and the case could not proceed without it.

This week, the district court where the University of Utah filed its suit rejected this argument from the defendants.

The plaintiff “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,” the Massachusetts District Court stated, adding that precedent had been set by a separate case between Connecticut and New York State officials that was permitted to proceed in a district court because New York itself was not sued.

The district court also noted that the University of Utah suit against the UMass officials does not “uniquely implicate sovereign interests,” and therefore may proceed.

“Unlike disputes over lakes, rivers, and state boundaries, a quarrel over patent rights does not implicate core sovereign interests,” it said. “Accordingly, this court has jurisdiction over the action against the UMass state officials.”

As for the plaintiff's argument that the University of Utah's case should be dismissed because UMass is a necessary party, the district court ruled that the suit could advance as it is without unfairly prejudicing UMass.

“UMass' interests are well represented by the other defendants, internationally renowned research institutions and a university, as well as the state officials themselves,” the court stated. Referring to a now-settled lawsuit over rights to a closely related IP family known as Tuschl-I (GSN 3/17/2011), it noted that “in the earlier litigation, UMass was an active participant in this court … [and] 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,” the district court added. Importantly, while the University of Utah would be able to bring its dispute against UMass before the Supreme Court, “it is unclear whether the Supreme Court would take jurisdiction over the other parties.”

Separately from UMass, the other defendants in the litigation had raised questions about the University of Utah's argument that interactions between Bass and the IP's listed inventors demonstrated her role in creating the patented technology.

In its suit, the plaintiff maintained that the inventors had read Bass' 2000 publication in Cell describing the role of Dicer's RNase III domains in cleaving dsRNA into siRNAs with 3' overhangs and identifying the genes that encode Dicer in various organisms, and attended scientific conferences where she discussed her research. The Tuschl-II inventors, the University of Utah maintains, then incorporated Bass' findings into their patent applications.

The defendants had argued that such activities did not count as true collaboration, a “legal requirement for joint inventor status."

The University of Utah's claim "is based on the unprecedented notion that routine interactions between independent researchers, such as interactions at professional conferences, are sufficient to support a claim of joint inventorship,” they told the court.

“No court has ever held that routine interactions between scientists conducting separate research programs at separate institutions constitutes the type of 'collaboration' necessary to support … joint inventorship,” the defendants said. “And for good reason. If the University of Utah's slippery standard for collaboration were the law, it would have a chilling effect on the free exchange of ideas among academic researchers … [and] the court should reject [such a] legally untenable and unprecedented theory of joint ownership.”

However, this week the district court shot down this argument, stating that there is “no bright-line standard in determining joint inventorship. Accordingly, the motion to dismiss [the suit] is denied.”

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