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University of Utah Aims to Keep RNAi IP Suit Against UMass Officials on Track

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The University of Utah last week fired back at a bid by University of Massachusetts officials to have an RNAi technology intellectual property lawsuit dismissed, arguing that the court hearing the case — and not the US Supreme Court, as the officials contend — is the appropriate venue for the litigation.

The UMass defendants have “repeatedly cast” the University of Utah as a “'forum shopper' attempting an 'end run' around the Supreme Court's jurisdiction,” the University of Utah said in the court filing. “These pejoratives misrepresent the true circumstances.”

In fact, the Massachusetts District Court currently hearing the case previously presided over litigation “arising from the same technical and factual issues,” with almost all of the same defendants, as the ongoing suit, the University of Utah stated.

“It is the UMass officials who seek to evade this forum in favor of a remote Supreme Court forum with which no party has any connection and which they prefer for undisclosed ... reasons,” it charged.

The legal imbroglio began in early 2011 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 one of its researchers, Brenda Bass, inventorship on the so-called Tuschl-II IP patents and applications (GSN 3/31/2011).

Named for co-inventor Thomas Tuschl, the IP essentially claims siRNAs, 21 to 23 nucleotides in length and with 2- to 3-nucleotide-long 3' overhangs, to target specific mRNA degradation in mammals.

Notably, Alnylam and Max Planck sued UMass, Whitehead, and MIT in 2009 over, among other things, the inclusion of the overhang invention in a related IP portfolio known as Tuschl-I. That dispute was settled in March 2011 (GSN 3/17/2011).

While the other defendants in the University of Utah case have largely focused their defense on the issues of the case, late last year UMass took a different tack, arguing that since both it and the plaintiff were state institutions, they should be considered US states. As such, the litigation between them could only be heard by the Supreme Court (GSN 11/3/2011).

“The Supreme Court has held that a state university is treated as the state itself for purposes of [its] original and exclusive jurisdiction over controversies between states,” UMass told the court at the time. Moreover, both institutions have specifically been treated as such in a number of other court decisions.

“Because the University of Utah's claims against UMass are claims of one state against another, the Supreme Court is the only court in which these claims can be heard,” it added.

Rather than press the issue, the University of Utah soon dropped UMass from the suit, only to name a number of the school's top officials as replacement defendants. They include UMass President Robert Caret; UMass COO James Julian; David Gray, the university's senior vice president for administration, finance, and technology; and James McNamara, executive director of UMass' office of technology management.

However, in February, the UMass defendants asked that the case be dismissed, arguing that, “like UMass, the UMass [officials] ... are immune from suit in this court since an action against a state official acting in his official capacity is treated like an action against the state itself.”

But last week, the University of Utah asserted that the case is “not an action between two states for the simple reason that none of the … defendants is a state or an arm of a state.”

Further, the University of Utah said that UMass' assertion that claims cannot be made against state officials in a district court when there is “an alternative forum,” i.e., the Supreme Court, “proves too much. In all cases in which a state or an arm of a state sues officials of another state, the Supreme Court is always available as an alternative forum. … Yet District Courts routinely exercise jurisdiction in such cases.”

According to the University of Utah, the UMass officials represent the university's senior management and are responsible for its patent and licensing decisions.

They have “the authority, ability, and obligation in their official capacities to control UMass and protect its interests,” it said. “To argue otherwise would be ludicrous. If UMass was joined as a defendant [in the case], one or more of the UMass officials who are presently defendants would likely be its corporate representative, and thus would be involved in all tactical and strategic decisions on UMass' behalf.”

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