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University of Utah Drops UMass from Tuschl IP Suit to Avoid Supreme Court Showdown

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By Doug Macron

The University of Utah last week dropped the University of Massachusetts as a defendant from its lawsuit over rights to key RNAi-related intellectual property in order to avoid a legal showdown in front of the US Supreme Court.

Rather than put the lawsuit on hold while it petitioned the Supreme Court to hear the case, the University of Utah said that “a more appropriate approach” would be to amend its complaint to replace UMass as a defendant with “culpable Massachusetts state officials.”

In doing so, the University of Utah said in a court filing that it would avoid questions of jurisdiction, allowing the case to proceed in the Massachusetts District Court in which it was originally filed.

The litigation began earlier this year 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 Tuschl-II IP patents and applications (GSN 3/31/2011).

Named for Alnylam co-founder and former Max Planck researcher Thomas Tuschl, the IP claims siRNAs, 21 to 23 nucleotides in length and with 2- to 3-nucleotide-long 3' overhangs, to target specific mRNA degradation in mammals. A related IP family, known as Tuschl-I, covers the same constructs, but without the overhangs.

In its suit, the University of Utah charges that Bass made important discoveries contained with Tuschl-II filings, including that the C. elegans gene K12H4.8 produces the Dicer enzyme required to cleave long double-stranded RNA into siRNA with 3' overhangs.

Bass “conceived the inventions of all the issued claims of Tuschl-II and at least some pending claims of Tuschl-I well before any date asserted by the currently named inventors,” according to the suit. She further “reduced her inventions to practice well before any date asserted” by the inventors of the two IP estates.

Yet none of the Tuschl-I or Tuschl-II patents or applications list Bass as an inventor, according to the University of Utah.

Last month, UMass responded by seeking to have the suit dismissed on procedural grounds, arguing that it and the University of Utah are considered US states under law and therefore any litigation between them can only be decided 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 said in its response. “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.”

Although the University of Utah had asked the District Court hearing its case for a stay on the legal proceedings while it prepared to petition the Supreme Court to review the litigation, last week it said that it had decided on another approach to keep its lawsuit going.

“By dismissing UMass from this action … this court’s jurisdiction is unquestioned,” the University of Utah said. “This approach moots [the] motion to stay.”

In place of UMass, the University of Utah said it would name as defendants certain Massachusetts officials, but provided no specifics on the identity of the individuals.


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