{"id":1477,"date":"2017-03-23T10:56:32","date_gmt":"2017-03-23T14:56:32","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1477"},"modified":"2017-03-25T12:19:04","modified_gmt":"2017-03-25T16:19:04","slug":"inventorship-claims-that-took-8-million-to-defeat-were-not-exceptional","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1477","title":{"rendered":"Inventorship Claims That Took $8 Million to Defeat Were Not “Exceptional”"},"content":{"rendered":"

In University of Utah v. Max-Planck-Gesellschaft\u00a0Zur\u00a0Foerderung der Wissenschaften E.V.<\/em>, [2016-1336] (March 23, 2017), the Federal Circuit affirmed the district court’s finding that the case was not exceptional March 23, 2017, within the meaning of 35 U.S.C. \u00a7 285 and denying Max Planck\u2019s motion for $8 million in attorney fees.<\/p>\n

Dr. Thomas Tuschl and his\u00a0colleagues published an article describing their various\u00a0discoveries in the field of RNAi. Less than a month later,
\nDr. Brenda Bass, of the University of Utah published a mini-review that summarized\u00a0the state of RNAi research, focusing on Dr. Tuschl\u2019s
\narticle. \u00a0Dr. Tuschl read Dr. Bass\u2019 minireview,\u00a0recognized her hypothesis that 3\u2019 overhangs may\u00a0be relevant to RNAi, and tested that hypothesis, and made the claimed invention.<\/p>\n

The University of Utah sued Max Plank claiming that its employee, Dr. Bass was a co-inventor. \u00a0The\u00a0claim of joint inventorship turned on
\nalleged collaboration between Dr. Bass and the Tuschl\u00a0that occurred over several conversations at\u00a0various academic conferences. \u00a0The Federal Circuit listed a number of admissions during Dr. Bass’ deposition that directly contradicted the University of Utah\u2019s allegations that Dr. Bass collaborated\u00a0with the Tuschl II inventors. The Federal Circuit noted that the only supported allegation\u00a0was that Dr. Bass and Dr. Tuschl met for dinner\u00a0during a conference.<\/p>\n

The\u00a0district court reasoned that there was no evidence\u00a0to support a finding of collaboration between Dr. Bass and\u00a0Tuschl. \u00a0While Dr. Bass\u2019 mini-review was\u00a0integral to the Tuschl inventors\u2019 research, the\u00a0mini-review was in the public domain by the time\u00a0Tuschl relied on it. The district\u00a0court concluded that Tuschl\u2019s reliance on the\u00a0mini-review could not, on its own, support a finding of\u00a0collaboration, and was not included to find that the discussions at an\u00a0academic conference could constitute the collaboration\u00a0needed to establish joint inventorship.<\/p>\n

Max Planck sought eight million dollars in attorneys’ fees pursuant to 35 U.S.C. \u00a7 285, arguing that the case\u00a0was \u201cexceptional\u201d because (1)\u00a0in light of Dr. Bass\u2019 deposition testimony, the University of Utah\u00a0lacked any meaningful basis for filing its correction of\u00a0inventorship suit; (2) the University of Utah\u2019s delay in withdrawing its sole\u00a0inventorship claim until the eve of summary judgment\u00a0indicates that it knew its claim was meritless; and (3) the University of Utah’s\u00a0claimed damages
\nwere extortionately high.<\/p>\n

The district court found that it was clear that Dr. Bass’ review played some role in the invention, rejecting the first grounds. \u00a0One the second point the district court actually credited the University for withdrawing its sole inventorship claim early. \u00a0On the last point the district court declined to find anything exceptional about the University of Utah’s position: \u201cAlthough Utah may have been asking for pie in\u00a0the sky, that does not differentiate this case from most\u00a0patent cases.\u201d<\/p>\n

The Federal Circuit found that the\u00a0district court provided a thorough explanation for\u00a0why it did not find this case to be exceptional. \u00a0Noting that there is no precise Octane Fitness frame-work, the Federal Circuit said that the district court\u00a0explained why the University of Utah\u2019s position did not stand out from other patent cases, and Octane Fitness does not require\u00a0anything more. \u00a0The Federal Circuit concluded:<\/p>\n

The trial judge was in the best position to\u00a0understand and weigh these issues. She had no obligation\u00a0to write an opinion that reveals her assessment of\u00a0every consideration. This court will not second guess her\u00a0determination.<\/p><\/blockquote>\n

Although it played no role in the appeal, one has to wonder whether the $8 million in attorneys’ fees requested\u00a0by Max Plank, which the district court called “jaw-dropping,” figured into the district court’s evaluation of the claim. \u00a0When the district court said that “it is not grossly unjust to require Max Planck to bear\u00a0its own costs,” \u00a0was the court thinking that if it really took $8 million to defeat the University’s claims on Summary Judgment, were they really so exceptional?<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In University of Utah v. Max-Planck-Gesellschaft\u00a0Zur\u00a0Foerderung der Wissenschaften E.V., [2016-1336] (March 23, 2017), the Federal Circuit affirmed the district court’s finding that the case was not exceptional March 23, 2017, within the meaning of 35 U.S.C. \u00a7 285 and denying … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[44],"tags":[],"class_list":["post-1477","post","type-post","status-publish","format-standard","hentry","category-attorneys-fees"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1477","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1477"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1477\/revisions"}],"predecessor-version":[{"id":1478,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1477\/revisions\/1478"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1477"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1477"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1477"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}