United States Court of Appeals 

for the Federal Circuit ______________________ 

UNIVERSITY OF UTAH,

Plaintiff-Appellee,

v.

MAX-PLANCK-GESELLSCHAFT ZUR 

FORDERUNG DER WISSENSCHAFTEN E.V., MAXPLANCK-INNOVATION GMBH, WHITEHEAD 

INSTITUTE FOR BIOMEDICAL RESEARCH,

MASSACHUSETTS INSTITUTE OF TECHNOLOGY,

AND ALNYLAM PHARMACEUTICALS, INC.,

 Defendants-Appellants, 

AND

ROBERT L. CARET, JAMES R. JULIAN, JR., 

DAVID J. GRAY, AND JAMES P. MCNAMARA, 

Defendants-Appellants. 

______________________ 

2012-1540, -1541, -1661

______________________ 

Appeals from the United States District Court for the 

District of Massachusetts in No. 11-CV-10484, Judge 

Patti B. Saris.

______________________ 

Decided: August 19, 2013 

______________________ 
2 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT

MARK S. CARLSON, Hagens Berman Sobol Shapiro, 

LLP, of Seattle, Washington, argued for plaintiff-appellee. 

With him on the brief was STEVE W. BERMAN. 

DAVID I. GINDLER, Irell & Manella, LLP, of Los Angeles, California, argued for all defendants-appellants. 

With him on the brief were MORGAN CHU, and ALAN J.

HEINRICH. Of counsel on the brief were SANDRA L.

HABERNY, of Newport Beach, California; and THOMAS F.

MAFFEI and SCOTT MCCONCHIE, Griesinger, Tighe & 

Maffei, L.L.P., of Boston, Massachusetts. 

______________________ 

Before MOORE, REYNA, and WALLACH, Circuit Judges.

Opinion for the court filed by Circuit Judge REYNA.

Dissenting opinion filed by Circuit Judge MOORE.

REYNA, Circuit Judge. 

The University of Utah (“UUtah”) brought this lawsuit to correct inventorship of U.S. Patent Nos. 7,056,704 

and 7,078,196 (the “Tuschl Patents”). Originally, UUtah 

named as defendants the assignees (“Assignees”) of the 

Tuschl Patents: Max-Planck-Gesellschaft zur Forderung 

der Wissenschaften e.V., Max-Planck-Innovation GmbH, 

Whitehead Institute for Biomedical Research, Massachusetts Institute of Technology, and Alnylam Pharmaceuticals, Inc., (collectively, the “non-State Defendants”) and 

the University of Massachusetts (“UMass”). 

UMass argued that, because the dispute was between 

two States, the Supreme Court had exclusive original 

jurisdiction. In response, UUtah amended its complaint, 

substituting four UMass officials (the “Named Officials”) 

in place of UMass. The Named Officials then moved to 

dismiss the case, arguing that UUtah’s claims were 

barred by sovereign immunity and that UUtah had failed 

to join UMass, which they claimed was an indispensable 
UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT 3

party. The district court denied the motion, and the 

defendants appealed. 

This case requires us to examine the issues of sovereign immunity and federal jurisdiction that arise when 

state universities are involved on both sides of an inventorship dispute. For the reasons that follow, we affirm.

BACKGROUND

The following facts come from UUtah’s complaint 

which, for the purpose of evaluating the motion to dismiss, we take as true.

Dr. Brenda Bass is a professor of biochemistry at 

UUtah. Her research is focused on RNA biochemistry. In 

particular, Dr. Bass studies RNA interference (“RNAi”), a 

phenomenon in which RNA plays a role in silencing the 

expression of individual genes. Her employment agreement assigns to UUtah the rights to all inventions and 

discoveries she makes as a result of her employment or 

research, including the rights to any patents arising from 

her work.

Dr. Thomas Tuschl, a researcher employed by UMass,

is also active in RNAi research. In the course of their 

work, Drs. Tuschl and Bass attended professional conferences at which they both presented papers on RNA and 

RNAi issues. Both researchers were familiar with each 

other’s work. Dr. Tuschl eventually applied for and was 

granted the Tuschl Patents, which Dr. Bass claims “disclosed and claimed [her] conception.” Dr. Bass is not a 

named inventor on either of the Tuschl Patents. 

UUtah, as assignee of Dr. Bass’s rights, believes that 

Dr. Bass is the sole or a joint inventor of the Tuschl 

Patents. UUtah asked Assignees to cooperate in petitioning the United States Patent and Trademark Office 

(“USPTO”) to correct the inventorship of the Tuschl 

Patents by adding Dr. Bass as an inventor. Defendants, 

who do not believe that Dr. Bass is an inventor of the 
4 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT

Tuschl patents, declined that request. As a result, UUtah 

initiated this suit in district court, requesting the correction of the inventorship of the Tuschl Patents under 35 

U.S.C. § 256 and asserting various state law claims

against the non-State defendants. 

The original and first amended complaints named as 

defendants each of the Assignees, including UMass. 

UMass moved to dismiss, arguing that because UUtah 

and UMass were both arms of the State, the dispute 

between them fell within the exclusive original jurisdiction of the Supreme Court. In response, UUtah amended 

its complaint, replacing UMass with four UMass officials: 

Robert L. Caret (President of UMass), James R. Julian

(Executive Vice President and Chief Operating Officer of 

UMass), David J. Gray (Senior Vice President for Administration, Finance, & Technology and University Treasurer of UMass), and James P. McNamara (Executive 

Director, Office of Technology Management of UMass). 

UUtah stated that its intent in making this amendment 

was to avoid the Supreme Court’s exclusive jurisdiction. 

The Named Officials moved to dismiss, arguing that 

the case fell within the exclusive original jurisdiction of 

the Supreme Court and that UUtah’s claims were barred 

by sovereign immunity. The district court rejected these 

arguments, concluding that relief under § 256 is “prospective in nature, and does not involve a retroactive remedy.” 

Citing Connecticut ex rel. Blumenthal v. Cahill, 217 F.3d 

93, 98 (2d Cir. 2000), the court ruled that the case did not 

fall within the exclusive original jurisdiction of the Supreme Court because UUtah had chosen to sue state 

officials, not the State itself. It also reasoned that correction of inventorship was not a core sovereign interest 

sufficient to make this a dispute between States. Accordingly, the district court concluded that it “ha[d] jurisdiction over the action against the UMass state officials 

under the Ex parte Young doctrine.” 
UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT 5

The Named Officials also argued that UUtah had 

failed to name UMass, which they claimed was an indispensable party. The district court rejected this argument 

as well, ruling that the suit could proceed without UMass. 

The court reasoned that neither UMass nor Defendants 

would be prejudiced by a judgment rendered in UMass’s 

absence because UMass’s interests would be adequately 

represented by the existing defendants, including the 

Named Officials. The court also found that the remedy—

an order directing the USPTO to correct inventorship—

would provide adequate relief whether or not UMass was 

joined. 

Defendants appeal the denial of the motion to dismiss. 

This court has jurisdiction under 28 U.S.C. § 1295(a)(1)

and the collateral order doctrine. See Puerto Rico Aqueduct & Sewer Authority v. Metcalf & Eddy, Inc., 506 U.S. 

139, 147 (1993) (holding that immediate appeal of the 

denial of a motion for dismissal based on sovereign immunity is permissible under the collateral order doctrine).

DISCUSSION

State universities frequently obtain assignments on 

patents invented by their faculties and staff, just as 

private corporations often obtain assignments on patents 

invented by their employees. Unlike a private corporate 

assignee or an individual inventor, a state university 

typically enjoys sovereign immunity. As a result, a state 

university generally may not be sued for infringement, 

nor may it be forced to defend against an action for declaratory judgment of invalidity or non-infringement. See

A123 Sys., Inc. v. Hydro-Quebec, 626 F.3d 1213, 1220 

(Fed. Cir. 2010). But States do not enjoy sovereign immunity from suits brought by other States. Texas v. New 

Mexico, 482 U.S. 124, 130 (1984). Similarly, States are 

free to sue citizens of other States without raising sovereign immunity issues. 
6 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT

This case requires us to examine the legal complexities that arise when state universities are on both sides of 

a patent dispute. Defendants present three issues for our 

consideration. First, they contend that the district court 

lacked jurisdiction because, under 28 U.S.C. § 1251(a), 

this case falls within the exclusive original jurisdiction of 

the Supreme Court. In procedural questions not unique 

to patent law, we review a dismissal for lack of subject 

matter jurisdiction according to the law of the regional 

circuit, which in this case is the First Circuit. See Toxgon 

Corp. v. BNFL, Inc., 312 F.3d 1379, 1380 (Fed. Cir. 2002). 

The First Circuit reviews a motion to dismiss de novo, 

“taking as true the well-pleaded facts contained in the 

complaint and drawing all reasonable inferences therefrom in the plaintiff’s favor.” Garrett v. Tandy Corp., 295 

F.3d 94 (1st Cir. 2002). 

Second, Defendants argue that, as an arm of the State 

of Massachusetts, UMass is entitled to Eleventh Amendment immunity. We have held that the question of Eleventh Amendment waiver is a matter of Federal Circuit 

law. Regents of the Univ. of N.M. v. Knight, 321 F.3d 

1111, 1124 (Fed. Cir. 2003). “We review the district 

court’s decision on Eleventh Amendment immunity de 

novo.” A123 Sys., 626 F.3d at 1219.

And, third, Defendants argue that UMass is an indispensable party and that the case should have been dismissed under Fed. R. Civ. P. 19(b). “Whether a party is 

indispensable under Rule 19(b) is a matter of regional 

circuit law.” Dainippon Screen Mfg. Co. v. CFMT, Inc., 

142 F.3d 1266, 1269 (Fed. Cir. 1998). The First Circuit 

reviews Rule 19 decisions for abuse of discretion. Picciotto v. Continental Cas. Co., 512 F.3d 9, 14 (1st Cir. 2008). 

Having established the applicable standards of review in 

this appeal, we address each of these issues in turn.
UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT 7

I. SUPREME COURT JURISDICTION

We begin with Defendants’ argument that this case is 

a dispute between States and, as such, falls within the 

exclusive original jurisdiction of the Supreme Court. If 

Defendants are correct, both this court and the district 

court are without jurisdiction over the dispute, and we 

must dismiss the case. Because UMass is not a real party 

in interest under the Supreme Court’s caselaw, we hold 

that this is not a conflict between States subject to the 

Court’s exclusive original jurisdiction. 

Article III, § 2, cl. 2 of the Constitution provides: “In 

all Cases . . . in which a State shall be Party, the 

[S]upreme Court shall have original Jurisdiction.” When 

a State sues another State, the Court’s jurisdiction is not 

only original, but exclusive. 28 U.S.C. § 1251(a) (“The 

Supreme Court shall have original and exclusive jurisdiction of all controversies between two or more States.”). 

But when a State sues the citizens of another State, the 

Supreme Court’s original jurisdiction is concurrent with 

the district courts. See id. § 1251(b)(3).

The Court has explained that both its exclusive and 

concurrent original jurisdiction is “obligatory only in 

appropriate cases.” Illinois v. City of Milwaukee, Wis., 

406 U.S. 91, 93-94 (1972). Whether original jurisdiction is 

appropriate depends upon “the seriousness and dignity of 

the claim,” whether the “named parties” have another 

forum “where appropriate relief may be had,” and whether the case raises “serious and important” federalism 

concerns.1 Id.; Wyoming v. Oklahoma, 502 U.S. 437, 451 

1 The dissent suggests that these considerations only apply to whether the Court exercises its exclusive 

jurisdiction, not to whether it exists. Dissent at 4. In 

Illinois, however, the Court considered all these factors 

before finding that its exclusive jurisdiction did not exist,

and that original jurisdiction resided in the district court. 

 
8 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT

(1992); Mississippi v. Louisiana, 506 U.S. 73, 77 (1992). 

Further, when deciding whether a case is “appropriate,” it 

is proper to look beyond the named parties and determine 

the real party in interest. Illinois, 406 U.S. at 93-94; In re 

State of New York, 256 U.S. 490, 500 (1921); Ex Parte 

Ayers, 123 U.S. 443, 487 (1887). 

A State is the “real, substantial party in interest,” for 

purposes of the Supreme Court’s exclusive jurisdiction, if 

it is a “mandatory” or “indispensable” party such that the 

decree would operate directly against it and adequate 

relief cannot be granted without it. Pennhurst State 

School & Hosp. v. Halderman, 465 U.S. 89 (1984) (decree 

operated directly against the State when the district court 

ordered a state mental hospital closed, its prisoners

moved, and a special master appointed to implement and 

monitor the court’s order); see also Dugan v. Rank, 372 

U.S. 609, 620 (1963) (decree would enjoin federal officials 

such that they would be forced to act contrary to congressional mandate); Cunningham v. Macon & Brunswick R. 

R. Co., 109 U.S. 446, 457 (1883) (Georgia was “indispensable” party because no relief could be granted without it); 

but see Illinois, 406 U.S. at 97 (State not “mandatory” 

party). 

For example, a State is the real, substantial party in 

interest if the judgment sought would expend itself on the 

State’s treasury. See, e.g., Land v. Dollar, 330 U.S. 731, 

738 (1947); Ex parte Ayers, 123 U.S. at 492 (1887); Cunningham, 109 U.S. at 455-456. Likewise, if an injunction 

against or compelling state administration is sought, the 

State is the real party in interest. Pennhurst, 465 U.S. at 

106 (instructing a State how to conform to its own law 

Illinois, at 93-94, 97-98. Thus, the Court was not merely 

declining to exercise its exclusive jurisdiction because, if it 

had been, jurisdiction in the lower court would have been 

improper. 

 
UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT 9

intrudes on state sovereignty); Corey v. White, 457 U.S. 

85, 89 (1982) (discussing restraint of state action); Hawaii 

v. Gordon, 373 U.S. 57 (1962) (decree would intrude on 

sovereignty because it would require the disposition of 

property belonging to the United States) (per curiam). 

On the other hand, a State with “some interest of hers 

[ ] more or less affected by the decision” but not directly 

affected by the court’s decree is not a real party in interest. Cunningham, 109 U.S. at 451, 452 (discussing, inter 

alia, when a State may join to assert a property right, but 

is not required to). For example, in Illinois, Illinois 

sought an abatement of a public nuisance allegedly 

caused by the city and county of Milwaukee polluting 

Lake Michigan. While Wisconsin’s interests would certainly have been indirectly affected by a decision abating 

the alleged pollution, the Court found that Wisconsin was 

not a “mandatory” party. Illinois, 406 U.S. at 97. Adequate relief could be granted without Wisconsin and the 

suit was allowed to go forward in district court against 

the named defendants, the city of Milwaukee and a Milwaukee County Sewage Commission. Id. at 97, 98; see 

also Land, 330 U.S. at 738 (U.S. Government is not a 

mandatory party if it is not needed to grant full relief). 

UUtah, the plaintiff in this case, is an arm of the 

State.2 See Watson v. Univ. of Utah Med. Ctr., 75 F.3d 

569, 574-75 (10th Cir. 1996). UUtah originally named 

UMass, which is also an arm of the State, see Wong v. 

Univ. of Mass., 777 N.E.2d 161, 163 n.3 (Mass. 2002), as a 

defendant. When UMass responded by arguing that the 

2 The “arm of the State” doctrine bestows Eleventh 

Amendment immunity on entities created by state governments that operate as instrumentalities of the State. 

See Mt. Healthy City Sch. Dist. Bd. of Educ. v. Doyle, 429 

U.S. 274, 280 (1977). We assume, without deciding, that 

this doctrine is also relevant to the § 1251 inquiry. 

 
10 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT

lawsuit was a dispute between States falling within the 

Supreme Court’s exclusive original jurisdiction, UUtah 

amended its complaint, replacing UMass with the Named 

Officials. As a result, there are no State defendants 

named in the second amended complaint; Defendants are 

all citizens of a State other than Utah. It follows that this 

action, at least on its face, is a proceeding brought by a 

State against the citizens of another State as described in 

§ 1251(b)(3) (and not a controversy between States under 

§ 1251(a)). If this is true, the Supreme Court does not 

have exclusive jurisdiction.

The district court, relying on Cahill, concluded that a 

State is generally free to “choose between naming a State 

as the defendant and suing in the Supreme Court or 

naming another proper defendant and suing in a district 

court.” Cahill, 217 F.3d at 98. Defendants nevertheless 

contend that this case falls within the exclusive original 

jurisdiction of the Supreme Court. Defendants assert that 

because UUtah seeks the property of UMass, UMass is 

the real party in interest, and that UUtah may not “plead 

around” the Supreme Court’s exclusive original jurisdiction over disputes between States. 

Thus, we must determine if UMass is a real party in 

interest for purposes of the Supreme Court’s exclusive 

jurisdiction under § 1251(a). The First Circuit has not yet 

addressed this issue. As noted, the district court based its 

decision on Cahill, a Second Circuit case that squarely 

addressed whether § 1251(a) deprives the district courts 

of jurisdiction over actions brought by one State against 

officials of another. 

At issue in Cahill was a New York law allowing resident permit holders to trap lobsters in a certain area but 

prohibiting non-resident permit holders from doing the 

same. Id. at 96. The State of Connecticut, acting as 

parens patriae, brought suit in federal district court to 

enjoin New York state officials from enforcing the law. Id. 
UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT 11

Although Connecticut had sued New York officials, not 

the State of New York, the district court “ruled that the 

State of New York was the sole real defendant-party in 

interest and dismissed the suit for lack of subject matter 

jurisdiction because the suit was a ‘controvers[y] between 

two or more States’ within the Supreme Court’s exclusive 

original jurisdiction.” Id. 

A divided panel of the Second Circuit reversed. The

majority concluded that “a plaintiff-State may decide 

whether or not to name another State as a defendant, and 

to enjoy (or suffer) the jurisdictional consequences of that 

decision.” Id. at 98. The majority reviewed the Supreme 

Court’s caselaw and concluded that a State is the real 

party in interest when “(1) the alleged injury was caused

by actions specifically authorized by State law, and (2) the 

suit implicates the State’s core sovereign interests.” Id. at 

99. The majority derived its core sovereign interests 

inquiry from the Supreme Court’s focus on “the seriousness and dignity of the claim” and cases that “implicate 

serious and important concerns of federalism.” Id. (quoting Mississippi, 506 U.S. at 77 and Wyoming, 502 U.S. at 

451. The majority provided several examples of core 

sovereign interests, including boundary disputes, disputes 

over water rights, and disputes over contracts between 

states. See id. at 100. A look to the Supreme Court’s 

caselaw identifies further examples. See, e.g., Pennhurst, 

465 U.S. at 106 (instructing state officials how to conform 

their conduct to state law “conflicts directly with the 

principles of federalism.”). The majority concluded that 

Connecticut’s suit did not challenge New York’s core 

sovereign interests, but instead “challenge[d] as unconstitutional the manner in which New York has exercised its 

unchallenged power to regulate its waters.” Id. at 104. 

Accordingly, the majority concluded that jurisdiction was 

appropriate in the district court. 

Circuit Judge Sotomayor dissented. In her view, the 

State of New York was the real party in interest. Id. at 
12 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT

107 (Sotomayor, J., dissenting) (“[W]hatever ‘considerable 

freedom’ the majority supposes a plaintiff-State possesses 

in [choosing defendants] is still constrained by the requirement that courts look beyond the form of the pleadings and determine who is the real party being sued.”). 

According to the dissent, “relief sought nominally against 

an officer is in fact against the sovereign if ‘the effect of 

the judgment would be to restrain the Government from 

acting, or to compel it to act.’” Id. at 106 (Sotomayor, J., 

dissenting) (citing Pennhurst, 465 U.S. 89, 101 & n.11; 

Hawaii, 373 U.S. at 58; and Dugan, 372 U.S. at 620). To 

Judge Sotomayor, there could be “no serious doubt” that 

although the action had been brought against state officials, it was an action by Connecticut against New York. 

Id. at 106.

The majority and dissent in Cahill focused on different aspects of Supreme Court caselaw when deciding

whether to disregard a plaintiff-State’s decision to name 

state officials as defendants (under § 1251(b)(3)) and treat 

the suit instead as a controversy between States (under § 

1251(a)). We need not predict the First Circuit’s focus

because, overall, the Supreme Court’s caselaw does not

require us to treat this case as a dispute between States.

First, UMass is not a real party in interest under the 

Cahill majority approach. The majority concluded that a 

State whose officers’ action is challenged must be considered the real party in interest where “(1) the alleged 

injury was caused by actions specifically authorized by 

State law, and (2) the suit implicates the State’s core 

sovereign interests.” Cahill, 217 F.3d at 99. Assuming 

arguendo that the first prong of this test is met, Defendants have not identified a core sovereign interest of Massachusetts in this case. The Named Officials are 

defendants only in counts 1-4, which seek correction of 

inventorship under § 256, and count 5, which seeks declaratory judgment that Dr. Bass is the sole or a joint 
UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT 13

inventor of the Tuschl patents. Thus, with respect to 

UMass, only inventorship is at issue. 

We hold that a State has no core sovereign interest in 

inventorship. The inventors of a patent are “the individual or, if a joint invention, the individuals collectively who 

invented or discovered the subject matter of the invention.” 35 U.S.C. § 100(f). It is axiomatic that inventors 

are the individuals that conceive of the invention: 

Conception is the touchstone of inventorship, 

the completion of the mental part of invention. It 

is the formation in the mind of the inventor, of a 

definite and permanent idea of the complete and 

operative invention, as it is hereafter to be applied 

in practice. Conception is complete only when the 

idea is so clearly defined in the inventor’s mind 

that only ordinary skill would be necessary to reduce the invention to practice, without extensive 

research or experimentation. [Conception] is a 

mental act . . . .

Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 

1227-28 (Fed. Cir. 1994) (internal quotation marks and 

citations omitted). To perform this mental act, inventors 

must be natural persons and cannot be corporations or 

sovereigns. And because States cannot be inventors, it 

follows that inventorship is not a core sovereign interest 

of the States.

UMass and the dissent confuse the issue by repeatedly framing the dispute as one of ownership, not inventorship. Although “[q]uestions of patent ownership are 

distinct from questions of inventorship,” they are closely 

related: “[E]ach co-inventor presumptively owns a pro 

rata undivided interest in the entire patent, no matter 

what their respective contributions.” Ethicon, Inc. v. U.S. 

Surgical Corp., 135 F.3d 1456, 1465 (Fed. Cir. 1998) 

(footnote omitted). But State ownership of patent rights 

is not akin to State ownership of water rights, natural 
14 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT

resources, or other property issues that “implicate serious 

and important concerns of federalism” and rise to the 

level of core sovereign interests. Cahill, 217 F.3d at 99. 

Accordingly, even if UMass and the dissent were correct 

that ownership was at issue in this case, that fact alone 

would not require us to consider UMass a real party in 

interest under the Cahill majority approach. 

Second, UMass is not a real party in interest under 

the Cahill dissent’s approach. As noted, the dissent 

focused on the Supreme Court’s language from Dugan, 

concluding that “relief sought nominally against an officer 

is in fact against the sovereign if ‘the effect of the judgment would be to restrain the Government from acting, or 

to compel it to act.’” Id. at 106 (Sotomayor, J., dissenting) 

(emphasis added); Dugan, 372 U.S. at 620. A judgment 

ordering the Director of the USPTO to correct inventorship will not require or restrain UMass from acting. 

Neither UMass nor its officials are required to cooperate 

with UUtah in petitioning for the correction of inventorship under § 256(a). Indeed, § 256(b) exists to provide a 

means for correcting inventorship when a party does not 

consent to cooperate under § 256(a), but a decree under § 

256(b) does not restrain the State, nor does it compel the 

State to act—rather, it may cause the Director of the 

USPTO to act. Thus, should UUtah prevail, the district 

court’s judgment would not directly restrain or compel

UMass. See Pennhurst, 465 U.S. at 117. 

A wider view of the Supreme Court cases addressing 

the real party in interest further supports this conclusion. 

UMass is not an “indispensable” or “mandatory” party 

because the district court is fully capable of granting the 

relief UUtah requests without UMass. See Illinois, 406 

U.S. at 97-98; Cunningham, 109 U.S. at 451; Ex parte 

Ayers, 123 U.S. at 489 (“if the state is not a party there is 

no party against whom the decree can be made”) (quoting 

Governor of Georgia v. Madrazo, 1 Pet. 110, 123-124. 

Here, the district court can grant UUtah all the relief it 
UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT 15

seeks by directing the USPTO to correct the inventorship 

of the Tuschl Patents.3 While certain of UMass’ interests 

may be “more or less affected by the decision,” the court’s 

decree will not deplete the state treasury, compel UMass 

to act, or instruct UMass how to conform to state law. 

Cunningham, 109 U.S. at 451; Pennhurst, 456 U.S. at 

106; Land, 330 U.S. at 738; Ex Parte Ayers, 123 U.S. at 

492. Indeed, events aside from the court’s judgment may 

later affect UMass’ interests but this is not “the decree

operat[ing] against UMass.” Pennhurst, 465 U.S. at 101, 

117 (“here[,] the relief sought and ordered has an impact 

directly on the state itself”) (emphasis added); Hawaii, 

373 U.S. at 58. While UMass would be a proper party in 

this case, it is not required for the relief UUtah seeks. 

Illinois, 406 U.S. at 97-98. 

In sum, whether we focus on the Cahill majority or 

dissent, or take a wider view of the Supreme Court’s 

caselaw, UMass is not a real party in interest here.4

3 UUtah also requests that the court assign it all 

rights to the Tuschl patents. However, should UUtah be 

entitled to these rights, then a decree correcting inventorhsip would provide all the relief it needs to obtain such 

rights. 

4 Contrary to the dissent, our decision does not 

strip the Supreme Court of its discretion to exercise its 

exclusive jurisdiction nor does it contradict the plain 

language of § 1251(a). Dissent at 4. As the dissent 

acknowledges, we must first determine whether the state 

(i.e. UMass) is a real substantial party in interest. Dissent at 2. Because it is not, this is not a “controvers[y] 

between two or more states” and the Court’s exclusive 

jurisdiction is not triggered. 28 U.S.C. § 1251(a). 

 
16 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT

II. SOVEREIGN IMMUNITY 

The district court also considered whether sovereign 

immunity barred UUtah’s suit. And, if so, whether the Ex 

Parte Young, 209 U.S. 123 (1908) exception to sovereign 

immunity applied. The Eleventh Amendment provides: 

“The Judicial power of the United States shall not be 

construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by 

Citizens of another State, or by Citizens or Subjects of any 

Foreign State.” While the Supreme Court has interpreted 

this amendment as encompassing a broad principle of 

sovereign immunity Edelman v. Jordan, 415 U.S. 651, 

662-63 (1974), sovereign immunity “applies only to suits 

by citizens against a State.” Texas, 482 U.S. at 130; 

Cahill, 217 F.3d at 101; but see Virginia Office for Prot. & 

Advocacy v. Stewart, 131 S. Ct. 1632, 1638 (2011). Because this case does not involve a suit by citizens against 

a State, there is no sovereign immunity issue here. 

III. RULE 19

Defendants argue that UUtah’s complaint should be 

dismissed for failure to join UMass, which Defendants 

contend is an indispensable party under Fed. R. Civ. P. 

19. Whether to dismiss under Rule 19 is a two-step 

inquiry: first, a party must be joined if feasible under 

Rule 19(a), and second, the party must be indispensable 

under Rule 19(b). See United States v. San Juan Bay 

Marina, 239 F.3d 400, 405 (1st Cir. 2001). The parties do 

not dispute that, as a co-owner of the Tuschl Patents, 

UMass is required to be joined if feasible. At issue is 

whether UMass is indispensable.5

5 The dissent notes that parties with an “economic 

stake” in a patent’s validity are proper defendants in a § 

256 suit. Dissent at 3, 7; citing Chou v. University of 

Chicago, 254 F.3d 1347, 1359-60 (Fed. Cir. 2001). There 

is no dispute that UMass could properly be named as a 

 
UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT 17

A 

Before we reach the merits of the district court’s 

ruling that UMass is not an indispensable party, we 

address our jurisdiction. Defendants have asked us to 

review this issue under the doctrine of pendent jurisdiction. Such requests are generally disfavored and are 

granted only in extraordinary circumstances. See Falana 

v. Kent State Univ., 669 F.3d 1349, 1360 (Fed. Cir. 2012). 

“These extraordinary circumstances may be present when 

the nonappealable decision is ‘inextricably intertwined’ 

with the appealable decision or when review of the nonappealable decision is ‘necessary to ensure meaningful 

review” of the appealable decision.’” Id. at 1361 (quoting 

Swint v. County Chambers Comm’n, 514 U.S. 48, 51 

(1995)). Defendants assert that the Rule 19 judgment is 

inextricably intertwined with the sovereign immunity 

issues. 

The First Circuit has held that “joinder of a Rule 19 

indispensable party may not be waived,” and has entertained the question even when it was raised for the first 

time on appeal. See Martinez Moll v. Levitt & Sons of 

Puerto Rico, Inc., 583 F.2d 565, 572 (1st Cir. 1978). This 

court has previously concluded that First Circuit law

permits performing the Rule 19(b) analysis for the first 

time on appeal. A123 Sys., 626 F.3d at 1221; see also

Bacardi Int’l Ltd. V. V. Suarez & Co., No. 12-1032, 2013 

WL 1919578, at *5 (1st Cir. May 8, 2013) (declining to 

remand for the district court to perform a Rule 19 analysis in the first instance when the record was adequate to 

decide the issue on appeal). On the foregoing basis, we 

proceed with our analysis of the Rule 19(b) issue. 

defendant in this action but the question is whether it is 

an indispensable party for purposes of Rule 19(b).

 
18 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT

B 

When a party that is required to be joined if feasible 

under Rule 19(a) cannot be joined, the court must determine whether, in equity and good conscience, the action 

should proceed among the existing parties or should be 

dismissed. Fed. R. Civ. P. 19(b). The factors for the court 

to consider include:

(1) the extent to which a judgment rendered in the 

person’s absence might prejudice that person or 

the existing parties;

(2) the extent to which any prejudice could be 

lessened or avoided by:

(A) protective provisions in the judgment;

(B) shaping the relief; or

(C) other measures;

(3) whether a judgment rendered in the person’s 

absence would be adequate; and

(4) whether the plaintiff would have an adequate 

remedy if the action were dismissed for nonjoinder.

Id. In weighing these factors, courts “should keep in mind 

the policies that underlie Rule 19, ‘including the public 

interest in preventing multiple and repetitive litigation, 

the interest of the present parties in obtaining complete 

and effective relief in a single action, and the interest of 

absentees in avoiding the possible prejudicial effect of 

deciding the case without them.’” Picciotto, 512 F.3d at 

15-16 (quoting Acton Co. v. Bachman Foods, Inc., 668 

F.2d 76, 78 (1st Cir. 1982)). 

Defendants cite several cases for the proposition that 

a “patent owner is an indispensable party who must be 

joined.” Appellant’s Br. 43 (quoting Alfred E. Mann 

Found. For Sci. Research v. Cochlear Corp., 604 F.3d 
UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT 19

1354, 1359 (Fed. Cir. 2010)). But these cases deal with 

standing to bring suit, not with indispensability under 

Rule 19(b). See Alfred E. Mann, 604 F.3d at 1358-59. To 

be sure, these cases strongly support the conclusion that 

patent owners are required to be joined if feasible under 

Rule 19(a). See Aspex Eyewear, Inc. v. Miracle Optics, 

Inc., 434 F.3d 1336, 1344 (Fed. Cir. 2006) (“For the same 

policy reasons that a patentee must be joined in any 

lawsuit involving his or her patent, there must be joinder 

of any exclusive licensee.”). But they do not create a perse rule that patent owners are automatically indispensable parties—there is no patent-specific exception to Rule 

19(b). As this court recognized in Alfred E. Mann, when a 

necessary patent owner is not joined, even when Rule 

19(a) is satisfied, the court must still perform the inquiry 

under Rule 19(b) to determine whether that owner is 

indispensable. 604 F.3d at 1363; see also Dainippon, 142 

F.3d at 1272 (“[E]ven if [a patentee] is a necessary party 

under Rule 19(a) because it would be prejudiced by a 

holding of invalidity of its patent, this prejudice does not 

automatically make CFMT indispensable.” (footnote 

omitted)).

C 

Here, the district court examined each of the four 

Rule 19(b) factors and concluded that UMass was not 

indispensable. Although First Circuit law applies to the 

question of joinder under Rule 19 in this case, the district 

court and both parties on appeal relied primarily on 

Dainippon, a Federal Circuit case applying Ninth Circuit 

joinder law. The failure to apply First Circuit law does 

not automatically compel us to vacate and remand this 

decision, however, for this is not a case where “the absence of independent analysis (or any analysis at all) is a 

reason for remand.” In re Olympic Mills Corp., 477 F.3d 

1, 9 (1st Cir. 2007). Accordingly, we will not disturb the 

district court’s decision if its reliance on Dainippon is 

consistent with First Circuit joinder law. See Rosario-
20 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT

Urdaz v. Rivera-Hernandez, 350 F.3d 219, 221 (1st Cir. 

2003) (“[A]n abuse of discretion occurs when the district 

court considers improper criteria, ignores criteria that 

deserve significant weight, or gauges only the appropriate 

criteria but makes a clear error of judgment in assaying 

them.”). As we explain below, the district court considered the proper criteria and correctly weighed those 

criteria in light of the record, and we therefore conclude 

that its reliance on Dainippon did not transform an 

otherwise proper decision into an abuse of discretion. 

In Dainippon, a manufacturer sought declaratory 

judgment of invalidity and non-infringement against a 

patent holding company and its licensee in the District 

Court for the Northern District of California. 142 F.3d at 

1267-68. The patentee, CFM, had created a wholly owned 

subsidiary, CFMT, as a holding company for its patent. 

CFM assigned its patents to CFMT, which then licensed 

them back exclusively to CFM. Id. The district court 

concluded that it lacked personal jurisdiction over CFMT, 

the holding company, because CFMT had no ties to California. The court also concluded that CFMT, as the owner

of the patent that the manufacturer sought to invalidate, 

was an indispensable party under Rule 19(b). Id. at 

1268-69. Accordingly, the court dismissed the suit.

On appeal, this court reversed. Relying on Ninth Circuit law, the court reasoned that prejudice is mitigated 

when an absent party is adequately represented, and that 

the presence in the suit of the assignee’s parent company 

and sole owner was adequate representation. Id. at 1272. 

This was especially true where the parent company 

effectively controlled the holding company and the two 

had jointly sought legal assistance in defending their 

patents. Id. The court found the second factor, the ability 

to shape relief to minimize prejudice, to have little relevance in the absence of prejudice. Id. at 1272-73. The 

court found the third factor, adequacy of the judgment, to 

be satisfied because a declaratory judgment did not 
UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT 21

require an affirmative act by the absent holding company; 

in other words, relief was not hollow absent joinder. Id.

at 1273. In light of the strong showing on the first three 

factors, the court gave little weight to the possibility that 

all parties might be able to be joined in a different district 

court. Id. 

The facts of the instant case support a conclusion of 

no indispensability even more strongly than in Dainippon. On the first factor, the district court concluded 

that UMass’s interests were adequately represented by 

Defendants—including all of the Tuschl Patent owners 

except UMass—each of whom stands to lose if inventorship changes. In contrast, no owners were joined in 

Dainippon. Also as in Dainippon, Defendants are jointly 

represented by legal counsel in protecting the Tuschl 

Patents. In light of these facts, the district court saw no 

prejudice, and therefore concluded that the second factor 

had little weight. Additionally, the district court’s finding 

on this prong is strongly supported by the settlement 

agreement which UMass entered into and handed sole 

and exclusive control of this suit over to Alnylam, which is 

a party to this suit. See Oral Arg. at 13:07-13:45, 26:45-

27:15. 

As to the third factor, an order directing the USPTO 

to correct inventorship would not be insufficient in the 

absence of UMass, just as findings of invalidity or noninfringement would not have been hollow in Dainippon. 

Defendants argue that such an order would not be binding on UMass. But the order would be binding on the

USPTO, and Defendants do not offer any reason why the 

USPTO would decline to change inventorship, should 

such an order ultimately be issued. Indeed, were the 

order to issue, UUtah would receive all of the relief it 

requests. 

Finally, we agree with the district court that the possibility that the Supreme Court would accept original 
22 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT

jurisdiction in this case weighs only slightly against 

UUtah. Although we do not predict whether the Court 

would accept such a case, we note that it does so only 

rarely. See Lawrence Baum, The Supreme Court 157 

(10th ed. 2010) (observing that out of 70 cases heard by 

the Court in the 2007 term, only one fell under the Court’s 

original jurisdiction). Accordingly, the availability of 

another forum in this case is not particularly strong. 

Certainly, it is less compelling than in Dainippon, where 

this court presumed that the absent party could be joined 

in the district of Delaware. Id. at 1273. In any event, the 

district court concluded that “this factor [wa]s significantly outweighed” by the other three. We cannot say that 

this conclusion was an abuse of its discretion. 

Although we conclude that the district court did not 

abuse its discretion in determining that UMass was not 

indispensable on these facts, we acknowledge that certain 

of these facts may change on remand. For example, if an 

unforeseeable conflict of interest arises which negates 

UMass’s assignment to Alnylam of sole and exclusive 

control over this lawsuit, UMass may be free to renew this 

motion. See Charles Alan Wright et al., Federal Practice 

and Procedure § 1609, at 128-29 (3d ed. 2001) (“The court 

is . . . free to reconsider a previously decided question of 

indispensability if there is a showing of changed circumstances.”). Rule 19 determinations are fact intensive and 

should be resolved by the district court in the first instance, not by this court in advance.

CONCLUSION

We affirm the district court’s ruling that this is not a 

dispute between States falling within the exclusive original jurisdiction of the Supreme Court. UUtah was free to 

choose between filing this suit in the Supreme Court and 

filing in federal district court. We also affirm the judgment that UMass is not an indispensable party. 

AFFIRMED
UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT 23

COSTS

Each party shall bear its own costs.
United States Court of Appeals 

for the Federal Circuit ______________________ 

UNIVERSITY OF UTAH,

Plaintiff-Appellee,

 

v.

MAX-PLANCK-GESELLSCHAFT ZUR 

FORDERUNG DER WISSENSCHAFTEN E.V., MAXPLANCK-INNOVATION GMBH, WHITEHEAD 

INSTITUTE FOR BIOMEDICAL RESEARCH,

MASSACHUSETTS INSTITUTE OF TECHNOLOGY,

AND ALNYLAM PHARMACEUTICALS, INC.,

 Defendants-Appellants, 

AND

ROBERT L. CARET, JAMES R. JULIAN, JR., 

DAVID J. GRAY, AND JAMES P. MCNAMARA, 

Defendants-Appellants. 

______________________ 

2012-1540, -1541, -1661

______________________ 

Appeal from the United States District Court for the 

District of Massachusetts in No. 11-CV-10484, Judge 

Patti B. Saris.

______________________ 

MOORE, Circuit Judge, dissenting.

The majority erroneously holds that a patentownership dispute between two state universities is not a 
2 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT

“controversy between two or more States.” It then compounds this error and holds that a patent owner is not an 

indispensable party to an action that seeks to reassign 

title to the patents-in-suit. I respectfully dissent.

I. Subject Matter Jurisdiction

The district court lacks jurisdiction over UUtah’s 

claims against the UMass Officials because those claims 

raise a dispute between two States, Utah and Massachusetts. Article III of the U.S. Constitution vests the Supreme Court with original jurisdiction over cases in which 

a State is a party. As § 1251(a) expressly states: “The 

Supreme Court shall have original and exclusive jurisdiction of all controversies between two or more States.” 

There is no dispute that UUtah and UMass are instruments of Utah and Massachusetts, respectively, and that 

a suit between those institutions could only be brought in 

the Supreme Court. See Maj. Op. at 9; Arkansas v. Texas, 

346 U.S. 368, 370–71 (1953). The majority, however, 

concludes that § 1251(a) does not apply here because 

UUtah elected to sue the UMass Officials rather than 

UMass. That conclusion is incorrect.

To determine if a suit implicates the Supreme Court’s 

exclusive original jurisdiction, we look “behind and beyond the legal form” of the claim and determine “whether 

the State is indeed the real party in interest.” Arkansas

v. Texas, 346 U.S. at 371. The majority agrees with this 

general proposition but holds that the UMass Officials, 

not UMass, are the real parties in interest. I disagree.

This case involves a dispute between UMass and 

UUtah over who owns the rights to the Tuschl II patents. 

UMass is the assignee of the Tuschl II patents and UUtah 

“wants to own the patents.” Oral Arg. at 43:45–43:54. 

UUtah is pursuing that interest through a correction of 

inventorship claim under 35 U.S.C. § 256 and a corresponding request for an order that UUtah owns the 

patents. J.A. 134–36, 141–43. UUtah claims that one of 
3 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT

its faculty members, Dr. Bass, invented the subject matter claimed in the Tuschl II patents. J.A. 118–34. It 

alleges that Dr. Bass’s resulting ownership interest flows 

to UUtah by “operation of law” via an assignment obligation. Id.; Oral Arg. 42:44–43:10. 

UUtah also alleges in its complaint that it “should be 

the sole owner or an owner” of the Tuschl II patents. J.A. 

134. It specifically requests that the court “order assignment of all right title and interest” in the patents to 

UUtah. J.A. 142. Indeed, the majority recognizes (1) that 

UUtah specifically requested that the court assign it all 

rights to the Tuschl II patents and (2) that UUtah will 

obtain the rights to the patents if it prevails on its correction of inventorship claims. Maj. Op. at 15 n.3. This is a 

dispute about ownership, plain and simple. 

UUtah cannot recast the nature of this dispute by suing the UMass Officials as stand-ins for UMass. Indeed, 

the majority never holds that the UMass Officials have 

any interest in this proceeding. Nowhere does the majority suggest that the UMass Officials are “parties concerned” that may be subject to a correction of inventorship 

action under § 256(b). See Chou v. Univ. of Chi., 254 F.3d 

1347, 1359–60 (Fed. Cir. 2001) (holding that parties with 

an “economic stake” in the patent are proper defendants 

in a § 256(b) action). The UMass Officials do not have a 

real interest in this action.

Section 1251(a) contains “uncompromising language”: 

the Supreme Court has original and exclusive jurisdiction 

over “all controversies between two or more States.” 

Mississippi v. Louisiana, 506 U.S. 73, 77 (1992). The 

majority errs when it concludes that § 1251(a) does not 

apply to this dispute because the “State has no core 

sovereign interest” in inventorship or patent ownership. 

Maj. Op. at 13–15. The majority’s “core sovereign interests” test is at odds with the plain language of the statute, 

which contemplates “all controversies” between states fall 
4 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT

within 1251, not just those involving core sovereign 

interests. There is simply no basis to limit the statute in 

such a way.

Moreover, requiring a core sovereign interest to implicate the Supreme Court’s exclusive jurisdiction erodes the

Court’s discretion to decide which controversies it will 

hear. The existence of the Supreme Court’s exclusive 

jurisdiction and its discretion to exercise that jurisdiction 

are separate concepts. The Court’s exclusive original 

jurisdiction extends to “all controversies between two or 

more States.” 28 U.S.C. § 1251(a). The Court, however, is 

not required to exercise its jurisdiction over every controversy. The Court tends to exercise its jurisdiction sparingly, depending upon the nature of the interest of the 

complaining State, the seriousness and dignity of the 

claim, and the availability of another original forum to 

resolve the dispute. Mississippi v. Louisiana, 506 U.S. at 

76–77. The concept of a “core sovereign interest” has 

roots in opinions that address whether the Supreme Court 

will decide to exercise its jurisdiction over a dispute, not 

whether the Court’s exclusive original jurisdiction over 

the controversy exists. See id. at 77; Texas v. New Mexico, 

462 U.S. 554, 570, 571 n.18 (1983); Connecticut ex rel. 

Blumenthal v. Cahill, 217 F.3d 93, 109 (2d Cir. 2000)

(collecting cases). The majority’s conflation of those two 

concepts strips the Supreme Court of its discretion to 

decide if a case is sufficiently serious to exercise jurisdiction over it. It reallocates that power to the lower 

courts—who will decide which subset of cases—those 

implicating core sovereign interest—will be presented to 

the Supreme Court.1 

1 The majority baldly asserts that issues of patent 

ownership and inventorship are not sufficiently grand for 

the Supreme Court to resolve in the first instance. That 

is not our decision to make. It is for the Supreme Court to 

 
5 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT

 The majority finds support for its decision in the 

Second Circuit’s split decision in Cahill. With all due 

respect, even if we adopt the flawed logic of the majority 

in Cahill, this case would still fall within the Supreme 

Court’s exclusive jurisdiction in § 1251. The majority

correctly recognizes that, generally, a State is the real 

party in interest if “the effect of the judgment would be to 

restrain the Government from acting, or compel it to act.” 

Maj. Op. at 14 (quoting Cahill, 217 F.3d at 106). But the 

majority nevertheless concludes that UMass is not the 

real party in interest because a judgment to correct inventorship “will not require or restrain UMass from acting.” 

Id. at 13. This is not correct.

A judgment in UUtah’s favor will restrain UMass’s 

ability to act. If successful, UUtah will be declared sole 

owner of the Tuschl II patents and UMass will have no 

interest in them. UMass will not be able to license or 

assign the patents. And UUtah will be able to exclude 

UMass from practicing the inventions claimed in the 

patents. Patent rights are the quintessential right to 

restrain. The effect of this judgment will be to prevent 

UMass from exploiting the Tuschl II patents or the technologies they cover. This certainly “restrain[s] the Government from acting.” 

UUtah alternatively requests that Dr. Bass be found 

to be a co-inventor. A finding that Dr. Bass is a coitself decide. And I point out that Universities earn over 

a billion dollars annually from licensing their inventions. 

Universities Report $1.8-Billion in Earnings on Inventions 

in 2011, The Chronicle of Higher Education, 

http://chronicle.com/article/University-InventionsEarned/133972. Ownership of the Tuschl II patents has 

significant consequences for Utah and Massachusetts: the 

patents “have generated hundreds of millions of dollars in 

revenue.” J.A. 134. 

 
6 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT

inventor of the Tuschl II patents will result in UUtah coowning those patents. The effect of the judgment would 

be that UUtah could practice or license the patents without UMass’s consent and without having to account to 

UMass. See 35 U.S.C. § 262. The judgment would thus

restrain UMass from asserting its rights in the Tuschl II 

patents against UUtah or any of UUtah’s licensees. 

Again, this restrains UMass from acting.

The majority ignores these effects on UMass. Without 

explanation, the majority asserts that UMass will only be 

“more or less affected by the decision” and that transfer of 

the Tuschl II patents to UUtah will “not deplete the state 

treasury.” Maj. Op. at 15. This is incorrect. A correction 

of inventorship by the PTO will give UUtah an ownership 

interest in the Tuschl II patents by operation of law and 

dilute or revoke UMass’s property interest. Indeed, as the 

majority also recognizes, UUtah expressly asks the court 

to order the reassignment of the patents to UUtah. The 

central effect of a judgment in UUtah’s favor will be to 

deplete the assets of the current owners of the Tuschl II 

patents, one of whom is UMass. UMass is thus the real 

party in interest in this case. 

This is a dispute between two state universities over 

who owns a valuable patent portfolio—a dispute over 

property ownership. As undesirable as it may be, we are 

bound to follow the plain language of § 1251(a): “The 

Supreme Court shall have original and exclusive jurisdiction of all controversies between two or more States.” It is 

up to the Supreme Court to decide if it wants to exercise 

its exclusive jurisdiction over this controversy. We should 

not contort the statute to avoid a perceived injustice2 that 

2 We note that Dr. Bass and UUtah could have protected their rights to the invention claimed in the Tuschl 

II patents without invoking the Supreme Court’s exclusive original jurisdiction. Dr. Bass could have filed her 

 
7 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT

would result if the Court declined to exercise jurisdiction 

over UUtah’s claims. 

UUtah initiated an action that seeks to obtain

UMass’s interest in the Tuschl II patents. That is a 

controversy between two States and can only be brought 

in the Supreme Court. Accordingly, we should reverse the 

district court’s decision that it had jurisdiction over 

UUtah’s claims against the UMass Officials. 

II. Indispensable Party

The majority’s holding that UMass is not an indispensable party to this action is incorrect. We have held that

when a plaintiff brings a declaratory judgment action 

seeking to invalidate a patent or hold it not infringed, the 

patentee is both a necessary and indispensable defendant 

in that action. A123 Sys., Inc. v. Hydro-Quebec, 626 F.3d 

1213, 1217–19, 1220–22 (Fed. Cir. 2010); Enzo APA & 

Son, Inc. v. Geapag A.G., 134 F.3d 1090, 1094 (Fed. Cir. 

1998). It would be nonsensical to suggest that all patent 

owners must be joined in a suit seeking to invalidate the 

patent, but they need not be joined in a suit over patent 

ownership. Indeed, § 256(b) requires a court, before it 

orders a correction of inventorship, to provide “notice and 

hearing of all parties concerned,” i.e., those with an “economic stake” in the patent. Chou, 254 F.3d at 1359–60. 

We should apply our general rule that all co-owners must 

be joined in an action that affects their patent. See Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1467 (Fed. 

Cir. 1998). 

The majority instead holds that UMass is not an indispensable party because UUtah joined “all of the Tuschl 

Patent owners except UMass,” each of whom are “jointly 

represented by legal counsel.” Maj. Op. at 21. It is not 

own patent application and provoked an interference 

proceeding at the PTO. 

 
8 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT

enough that UMass and the named defendants “share the 

same overarching goal” of defeating UUtah’s inventorship 

and ownership claims. A123 Sys., 626 F.3d at 1221 

(holding that absent patentee was an indispensable party 

when the named party had “overlapping” but not “identical” interests). 

The majority deviates from our longstanding requirement that all patent owners be joined, citing an 

exception created in Dainippon Screen Manufacturing Co. 

v. CFMT, Inc., 142 F.3d 1266 (Fed. Cir. 1998). It is true 

that, like Dainippon Screen, the named defendants here 

are represented by common counsel. But the majority 

omits the “highly relevant” facts from Dainippon Screen—

the absent party was a wholly-owned subsidiary of the 

named party and was created by the named party to 

enforce the patents-in-suit. 142 F.3d at 1267–68, 1272–

73. We allowed the suit to go forward because “the parties’ interests in the asserted patents were not just common, but identical.” A123 Sys., 626 F.3d at 1221 

(discussing Dainippoin Screen). 

There is no party in this suit which represents 

UMass’s interest in the Tuschl II patents. Other defendants also have an interest in the patents, but they do not 

represent UMass’s interest. Indeed, their interests may 

well diverge. For example, the non-UMass defendants 

may choose to settle with UUtah in a way that diminishes 

UMass’s rights, such as stipulating that Dr. Bass is the 

sole inventor of the Tuschl II patents in exchange for 

ownership interests in the patents. That risks extinguishing UMass’s rights to the patents without UMass participating in the lawsuit. 

The majority further claims that defendant Alnylam 

can represent UMass’s interest because UMass “handed 

sole and exclusive control of this suit over to Alnylam.” 

Maj. Op. at 21. That right, however, is conditional. If 

there is a conflict of interest, Alnylam loses its right to 
9 UNIVERSITY OF UTAH v. MAX-PLANCK-GESELLSCHAFT

control UMass’s defense. Id. The agreement thus contemplates that Alnylam and UMass may not have identical interests. Because UMass does not have identical 

interests with any of the named defendants, it is an 

indispensable party in this case. I dissent from the majority’s contrary holding.