Purported Inventor’s Damaging Deposition Testimony Not Sufficient to Warrant Attorneys’ Fees for Failed Inventorship Challenge

If you practiced at the pharma-academia interface during the past five decades, you have no doubt heard the mantra it’s about the science and not about the money when issues arose. It was almost always about the money. A case in point is provided by the recent CAFC decision in University of Utah v. Max Planck Gesellschaft.

In that case, Max Planck successfully defended a group of ten patents directed to improved methodologies relating to RNA interference, identified as the Tuschl II patents, against a claim to revise inventorship in these patents to name a Utah scientist (Dr. Bass) as sole or joint inventor.

The factual basis for the inventorship claim arose from an interaction between Drs. Bass and Tuschl regarding the original methodology in RNA interference set out in a scientific publication identified, as Tuschl I. Such interaction resulted in what was deemed a mini review by Dr. Bass in the scientific journal cell which described the technology and set forth several hypotheses of Dr. Bass including one proposing the ‘3’ overhangs as the enzyme feature that was possibly responsible for the observed activity obtained by the Tuschl technology.

During depositions taken in the course of discovery, defendants’ counsel obtained several damaging admissions from Dr. Bass which clearly undermined the claim of the University of Utah that Dr. Bass had successfully reduced the inventions claimed in the Tuschl II patents to practice. Thereafter, plaintiff voluntarily dismissed its claim that Dr. Bass was sole inventor to these inventions with prejudice, but maintained its claim to joint inventorship. However, the district court found for Max Planck on their motion for summary judgment on the joint invention claim finding that there was no evidence to support a general collaboration between the inventors of Tuschl II and Dr. Bass, that the minor mini-review was in the public domain prior to filing the Tuschl II applications and was cited and overcome in every instance during prosecution and, finally, that a single discussion between Dr. Bass and Dr. Tuschl over dinner might have influenced the invention but did not rise to joint inventorship.

Max Planck, stuck with substantial legal fees to fight off the inventorship challenge, sought to have the district court award it eight million dollars pursuant to 35 U.S.C. §285. It based its claim to have case declared “exceptional” on three grounds: (1) the University lacked any meaningful basis for filing because it either failed to properly interview Dr. Bass or filed knowing that Dr. Bass would not support its allegations; (2) that the University waiting to withdrawing its sole inventorship claim until the eve of summary judgment evidenced that it knew its claims were meritless; and (3) the claimed damages sought by plaintiff were at an extortive level.

However, in spite of the damaging effect of Dr. Bass’ deposition admissions, the district court found enough reasons to consider the inventorship claim to be plausible due to the contribution made during their interactions as corroborated by the published mini-review. Thus, it declined to declare the case exceptional.

The CAFC, in an opinion by Judge Reyna for a unanimous panel, gave high deference to the district court and affirmed. In so doing the reviewing parcel refused Max Planck’s argument that they should follow the direction suggested by the Supreme Court in Octane Fitness, LLC v. Icon Health & Fitness, Inc., 134 S. Ct. 1749 (2014) to consider the substantive weakness of the plaintiff’s litigation in light of Dr. Bass’s deposition testimony. In reviewing the record below, the CAFC found no factors that would raise the case to stand out from other’s. Max Planck was thus faced with having to swallow its $8 million litigation cost.

George M. Gould is Counsel in the Gibbons Intellectual Property Department.
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