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UMass Aims to Stay Tuschl IP Dispute as University of Utah Argues to Keep It Moving


The University of Utah this month took steps to keep its RNAi intellectual property lawsuit on track after the defendants in the case sought a stay of proceedings, arguing that discovery in the litigation should proceed while certain jurisdictional issues are resolved.

Meanwhile, the defendants — Alnylam Pharmaceuticals, the Max Planck Institute, the Whitehead Institute for Biomedical Research, the Massachusetts Institute of Technology, and the University of Massachusetts — fired back, asserting that to let the discovery process continue would be unfairly prejudicial.

The legal row began in early 2011 when the University of Utah sued the defendants for allegedly failing to include one of its researchers, Brenda Bass, as a co-inventor — or even sole inventor — on seminal RNAi-related IP known as the Tuschl-II patent family (GSN 3/31/2011).

The IP covers siRNAs, 21 to 23 nucleotides in length and with 2- to 3-nucleotide-long 3' overhangs, to target specific mRNA degradation in mammals, and is named for co-inventor and former Max Planck researcher Thomas Tuschl.

Bass “conceived the inventions of all the issued claims of Tuschl-II and at least some pending claims of [a related IP estate] well before any date asserted by the currently named inventors,” the University of Utah claimed. She further “reduced her inventions to practice well before any date asserted” by the inventors of the two IP estates.

As part of its legal defense, UMass argued that it and the University of Utah are state institutions and therefore should be considered US states, making the US Supreme Court the only venue where the suit could be heard. The University of Utah opted to drop UMass as a defendant and instead sue certain of the institute's top officials.

UMass later argued that it is an “indispensable party” to the litigation and asked for a dismissal of the suit, but the district court hearing the case rejected its request. Undeterred, UMass recently filed an appeal in a federal court to re-exam the issue (GSN 6/28/2012).

With the litigation against UMass effectively on hold pending that review, the University of Utah this month asked the district court to keep on track the proceedings against the other defendants, none of which had at the time claimed immunity from the suit as UMass had.

According to the University of Utah, the UMass defendants would not be “irreparably injured” if discovery in the case continued while its appeal is being considered, and that it would be “substantially” injured if the case was put on hold entirely during that review.

“The relevant events date back to at least 1998, 14 years ago,” the plaintiff told the court. “If a stay of all proceedings is granted, [it] will not be able to begin discovery until years from now.

“Delay disproportionately impacts [the University of Utah], as defendants no doubt calculate,” it added. “As the years drag by, memories fade; witnesses die or relocate; documents and other materials are lost; electronically stored information can be lost, overwritten, or become prohibitively expensive to retrieve. Justice delayed is justice denied. There can be no serious dispute that [the university] will be substantially prejudiced if a stay is granted.”

In a reply to the University of Utah, however, the defendants charged that the case should be stayed in its entirety; otherwise UMass' appeal to the federal court could be compromised.

“A stay is also warranted for jurisprudential reasons, where resolution of the appeal could result in the dismissal of the entire action,” the defendants said.

Should UMass succeed in its argument that the case should go before the Supreme Court, there is no guarantee that that court will hear the case, they noted. “And if the Supreme Court declines to accept jurisdiction over the case, it does not return to the district court. In that event, the case will not proceed in any court, making any discovery proceedings at this junction a colossal waste of time, money, and resources.”

The defendants rejected the University of Utah's contention that UMass' appeal would be unaffected by the continuance of discovery, adding that if it discovery proceeded piecemeal against some defendants, the UMass defendants would be burdened by having to “monitor depositions, document exchanges, and other discovery to protect their interests.

“Contrary to [the plaintiff's] suggestion, there is no meaningful way for this court to limit discovery so that it does not impact the rights” of UMass, they stated.

The University of Utah, meantime, would not suffer harm by a stay of proceedings, the defendants added, noting that it was the plaintiff that waited more than 14 years to bring its correction of inventorship claims to court.

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