Ali v. Carnegie Inst. Washington

• Decision Date: 25 November 2013
• Docket Number: Case No. 3:12–cv–01764–SI.
• Parties: Mussa ALI, Plaintiff, v. CARNEGIE INSTITUTION OF WASHINGTON, and University of Massachusetts, Defendants.
• Court: U.S. District Court — District of Oregon

967 F.Supp.2d 1367

Mussa ALI, Plaintiff,

v.CARNEGIE INSTITUTION OF WASHINGTON, and University of Massachusetts, Defendants.

Case No. 3:12–cv–01764–SI.

United States District Court, D. Oregon.

May 28, 2013.

Order Denying Reconsideration Nov. 25, 2013.

Joseph W. Berenato III, and Steven V. Kelber, Berenato & White, LLC, Bethesda, MD, Joel P. Leonard, and John D. Ostrander, Elliott, Ostrander & Preston, P.C., Portland, OR, for Plaintiff.

Kurt G. Calia, Covington & Burling LLP, Redwood Shores, CA, Alexa R. Hansen, and Nathan E. Shafroth, Covington & Burling, LLP, San Francisco, CA, Kelly M. Jaske, Jaske Law LLC, Portland, OR, for Defendants.

OPINION AND ORDER

MICHAEL H. SIMON, District Judge.

Plaintiff brings this lawsuit to correct the inventorship of five issued patents related to gene silencing. For the reasons stated below, Defendants' Motion to Dismiss (Dkt. 18) is GRANTED IN PART AND DEFERRED IN PART, Plaintiff's Motion for Jurisdictional Discovery (Dkt. 30) is GRANTED IN PART AND DENIED IN PART AND STAYED, and Plaintiff's request for a Rule 16 conference (Dkt. 33) is GRANTED.

BACKGROUND

This case arises out of Plaintiff Mussa Ali's claim that he was erroneously omitted as a named inventor on five patents: U.S. Patent Nos. 6,506,559; 7,538,095; 7,560,438; 7,622,633 and 8,283,329. Am. Compl. ¶ 3, 25–26. Defendants Carnegie Institute of Washington (“Carnegie”) and University of Massachusetts (“UMass”) are owners, by assignment, of the patents at issue. Am. Compl. ¶ 3–4.

Defendants have filed a motion to dismiss or strike Plaintiff's First Amended Complaint (“FAC”). Dkt. 18. They argue that the Court lacks subject matter jurisdiction over the action based on the sovereign immunity of Defendant UMass and its status as a “required party.” In the alternative, Defendants contend that the Court lacks personal jurisdiction over all Defendants. Before Plaintiff's response was due, Plaintiff filed a motion seeking jurisdictional discovery on both aspects of Defendants' motion to dismiss. Dkt. 30. Simultaneously, Plaintiff filed a request for a Rule 16 Conference to discuss and schedule any allowed jurisdictional discovery. Dkt. 33. Defendants oppose Plaintiff's request for a Rule 16 conference, urging the Court to decide their motion to dismiss without permitting discovery. Dkt. 34.

On April 9, 2013, the Court issued a Minute Order stating that it was considering ordering a stay of this litigation until the U.S. Court of Appeals for the Federal Circuit issued its opinion in a pending case that appears to involve similar factual and legal issues. Dkt. 35 referring to University of Utah v. Max–Planck, No. 12–1540 (Fed.Cir.2013). The Court invited any party wishing to be heard on that question to file a motion within 14 days. Id. All parties objected to the Court's contemplated stay, arguing that the cited case would not be dispositive or the pending motion to dismiss could be decided on alternative grounds. Dkts. 39, 40. Since that time, Defendants filed a memorandum arguing that Plaintiff's failure substantively to respond to Defendants' motion to dismiss is sufficient grounds for the Court to grant that motion. Dkt. 37. Defendants also filed their opposition to Plaintiff's request for jurisdictional discovery. Dkt. 38.

STANDARDS

In patent cases, Federal Circuit law governs the relevance of a request for jurisdictional discovery. See Commissariat A L'Energie Atomique v. Chi Mei Optoelectronics Corp., 395 F.3d 1315, 1323 (Fed.Cir.2005); Beverly Hills Fan Co. v. Royal Sovereign Corp., 21 F.3d 1558, 1564 (Fed.Cir.1994). Whether jurisdictional discovery is warranted, however, is a question answered by the law of the regional circuit. See Chi Mei, 395 F.3d at 1323 (relying on regional circuit law to determine whether the party seeking discovery “made a sufficient threshold showing”); see also Autogenomics, Inc. v. Oxford Gene Tech. Ltd., 566 F.3d 1012, 1021 (Fed.Cir.2009) (“We review the district court's denial of discovery, an issue not unique to patent law, for abuse of discretion, applying the law of the regional circuit.”).

Because there is no statutorily proscribed method for resolving jurisdictional disputes before trial, the mode of resolution is left in the discretion of the trial court. See Data Disc, Inc. v. Sys. Tech. Assocs., Inc., 557 F.2d 1280, 1285 (9th Cir.1977) (citing Gibbs v. Buck, 307 U.S. 66, 71–72, 59 S.Ct. 725, 83 L.Ed. 1111 (1939)). If a court limits the presentation of relevant evidence to “affidavits plus discovery materials,” as opposed to holding an evidentiary hearing, then the plaintiff “must make only a prima facie showing of jurisdictional facts through the submitted materials in order to avoid a defendant's motion to dismiss.” Id. In considering whether to grant or deny jurisdictional discovery, a trial court has broad discretion. Id. Generally, discovery is appropriate “where pertinent facts bearing on the question of jurisdiction are controverted or where a more satisfactory showing of the facts is necessary.” Id. at 1285 n. 1 (citing Wells Fargo & Co. v. Wells Fargo Express Co., 556 F.2d 406, 430 n. 24 (9th Cir.1977)). A court may deny jurisdictional discovery unless the denial “will result in ‘actual and substantial prejudice to the complaining litigant’ (e.g., ‘a reasonable probability that the outcome would have been different had discovery been allowed’).” Digeo, Inc. v. Audible, Inc., 505 F.3d 1362, 1370 (Fed.Cir.2007) (quoting Laub v. U.S. Dep't of Interior, 342 F.3d 1080, 1093 (9th Cir.2003)).

DISCUSSION

Defendants assert two independent grounds for complete dismissal of this case. First, Defendants argue that UMass is entitled to sovereign immunity and that UMass is a required party that cannot be joined; thus, the case must be dismissed, Defendants argue, pursuant to Federal Rule of Civil Procedure 12(b)(7). Second, Defendants argue that the Court cannot properly exercise personal jurisdiction over them. In the alternative to these two arguments for complete dismissal, Defendants contend that Plaintiff's second count and alternative second count must be dismissed for failure to state a claim pursuant to Federal Rule of Civil Procedure 12(b)(6). In response to Defendants' motion to dismiss, Plaintiff seeks discovery related to Defendants' motion and a Rule 16 conference. Except in part, Plaintiff has not yet responded to the merits of Defendants' motion.

A. UMass's Sovereign Immunity

Defendants argue that UMass should be dismissed because it is immune from suit under the Eleventh Amendment as an arm of the state of Massachusetts. Plaintiff opposes Defendants' contention, arguing that discovery is necessary to determine whether UMass is entitled to immunity or if it has waived its sovereign immunity.

The Eleventh Amendment provides sovereign immunity to states from suits brought in federal court.¹See Idaho v. Coeur d'Alene Tribe of Idaho, 521 U.S. 261, 268, 117 S.Ct. 2028, 138 L.Ed.2d 438 (1997). “[A] federal court has subject matter jurisdiction to hear cases involving federal law, but the Eleventh Amendment gives the state ‘a sovereign immunity from suit.’ ” Tegic Commc'ns Corp. v. Bd. of Regents of Univ. of Texas Sys., 458 F.3d 1335, 1340 (Fed.Cir.2006) (quoting Coeur d'Alene Tribe, 521 U.S. at 267, 117 S.Ct. 2028). Sovereign immunity applies to actions brought under the patent laws of the United States. See generally Fla. Prepaid Postsecondary Educ. Expense Bd. v. Coll. Sav. Bank, 527 U.S. 627, 119 S.Ct. 2199, 144 L.Ed.2d 575 (1999) (holding that Congress did not properly abrogate states' Eleventh Amendment immunity from suits under the Patent Act). A state, however, may waive its immunity from suit under two circumstances: “when the state makes a ‘clear declaration’ that it intends to waive immunity, such as by statute, or when the state voluntarily invokes federal jurisdiction.” Tegic Commc'ns, 458 F.3d at 1340 (internal citations omitted) (citing Port Auth. Trans–Hudson Corp. v. Feeney, 495 U.S. 299, 110 S.Ct. 1868, 109 L.Ed.2d 264 (1990); Gunter v. Atl. Coast Line R.R. Co., 200 U.S. 273, 26 S.Ct. 252, 50 L.Ed. 477 (1906)).

The Eleventh Amendment only applies to states and state officials; it does not apply “to counties and similar municipal corporations.” Mt. Healthy City Sch. Dist. Bd. of Educ. v. Doyle, 429 U.S. 274, 280, 97 S.Ct. 568, 50 L.Ed.2d 471 (1977). If a defendant is an “arm of the state,” then it is entitled to Eleventh Amendment immunity from suit. See id. To determine whether a public entity is an arm of the state, a court looks at five factors:

(1) whether a money judgment would be satisfied out of state funds, (2) whether the entity performs central governmental functions, (3) whether the entity may sue or be sued, (4) whether the entity has the power to take property in its own name or only the name of the state, and (5) the corporate status of the entity.

Holz v. Nenana City Pub. Sch. Dist., 347 F.3d 1176, 1180 (9th Cir.2003) (internal quotation marks and citation omitted). “To determine these factors, the court looks to the way state law treats the entity.” Durning v. Citibank, N.A., 950 F.2d 1419, 1423 (9th Cir.1991) (quoting Mitchell v. Los Angeles Cmty. Coll. Dist., 861 F.2d 198, 201 (9th Cir.1988), cert. denied,490 U.S. 1081, 109 S.Ct. 2102, 104 L.Ed.2d 663 (1989)). The party asserting sovereign immunity has the “burden of proving the facts that establish its immunity.” ITSI T.V. Prods., Inc. v. Agric. Assocs., 3 F.3d 1289, 1292 (9th Cir.1993). The Ninth Circuit has noted, however, that immunity will be in serious dispute “only where a relatively complex institutional arrangement makes it unclear whether a given entity ought to be treated as an arm of the state.” Id.

Notwithstanding Plaintiff's arguments to the contrary, the five factors identified generally do not require the presentation of extraneous evidence. See, e.g., ITSI, 3 F.3d at 1292–94 (deciding the defendant was not an arm of the state with reference to various portions of...