24 March 2017Americas

Federal Circuit affirms rejection of $8m Max Planck attorneys’ fees

The US Court of Appeals for the Federal Circuit has backed a district court decision that a patent lawsuit against the University of Utah was not exceptional, thereby denying fees to the Max Planck Society for the Advancement of Science.

German research organisation Max Planck had appealed to the Federal Circuit after the US District Court for the District of Massachusetts deemed the case not exceptional within the meaning of 35 USC, section 285.

Inventorship of the ‘Tuschl II’ patents, which relate to the field of RNA interference (RNAi), are at the centre of the dispute.

RNAi is a process for ‘silencing’ certain genes from expressing the proteins they encode.

According to the Federal Circuit, in March 2000 Thomas Tuschl and his colleagues, who were part of the Max Planck society, published an article describing their various discoveries in the field of RNAi.

Less than a month later, Brenda Bass, of the University of Utah, published a mini-review in “Cell” magazine that summarised the state of RNAi research, focusing on Tuschl’s article.

The review also included several of Bass’s own hypotheses about enzymatic processes that may have been responsible for the RNAi activity reported in Tuschl’s article.

“One of those hypotheses involved molecules that have a feature called ‘3’ overhangs’, which are certain double-stranded RNA (dsRNA) molecules with a nucleotide overhang on the 3’ ends of dsRNA,” said the court.

Tuschl read Bass’s review, recognised her hypothesis and tested it.

The tests were successful—“data from cloning and sequencing revealed that species with 3’ overhangs were prevalent in active RNAi systems.”

Max Planck filed a patent application for the discovery.

During prosecution of all ten Tushl II patents, Bass’s review was cited as prior art.

The University of Utah, on behalf of Bass, sued Max Planck for correction of ownership, claiming that Bass should be named as either a sole or joint inventor of the Tuschl II patents.

The university withdrew its sole inventorship claims with prejudice, but declined to withdraw its joint inventorship claim.

Max Planck then secured motions for summary judgment with respect to the joint inventorship claims, with the court finding that the University of Utah had no case.

However, the district court denied Max Planck’s motion for $8 million attorneys’ fees, so the society appealed.

The Federal Circuit disagreed with Max Planck’s arguments, adding that the district court had “provided a thorough explanation for why it did not find this case to be exceptional”.

According to the ruling, Max Planck had presented evidence from the record suggesting that the district court failed to take certain facts into account and overstated the factual and legal strength of the university’s position.

The university presented evidence from the record suggesting the contrary and defending its litigation strategy.

“We should be wary to wade in such circumstantial waters,” said Circuit Judge  Jimmie Reyna.

He explained that the trial judge was in the best position to understand and weigh the issues, and had no obligation to write an opinion that reveals her assessment of every consideration.

Reyna added: “This court will not second guess her determination.”

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