Max-planck-gesellschaft Zur Forderung Der Wissenschaften E v. Gmbh

Decision Date07 February 2011
Docket NumberCIVIL ACTION NO. 09-CV-11116-PBS
CourtUnited States District Courts. 1st Circuit. United States District Courts. 1st Circuit. District of Massachusetts

Saris, U.S.D.J.

Plaintiffs Max-Planck-Gesellschaft Zur Foerderung der Wissenschaften E.V. ("Max Planck") and Alnylam Pharmaceuticals, Inc. ("Alnylam") have sued defendants Whitehead Institute for Biomedical Research ("Whitehead"), Massachusetts Institute of Technology ("MIT"), and the Board of Trustees of the University of Massachusetts ("UMass") over the intellectual property rights to certain inventions in the field of "RNA interference." Theparties have filed cross-motions for partial summary judgment.

The plaintiffs request that the Court find as a matter of law that the priority claim within U.S. Utility Patent Application No. 09/821, 832 ("the Tuschl I application" or "the '832 application") to European Patent application 00126325.0 ("the '325 application"), is improper. Plaintiffs also request that this Court find that there is no genuine issue of material fact with respect to the defendants' counterclaims based on plaintiffs' Goldstein petitions and defendants' counterclaims for tortious interference against the plaintiffs, and that these counterclaims be dismissed.1

Defendant UMass moves for summary judgment on the grounds that there is no genuine issue of material fact to be determined with regards to Counts VII and XVII of plaintiffs' First Amended Complaint, asserting violations of Chapter 93A, Count XV, alleging unjust enrichment, and Count XVIII, seeking a declaratory judgment.

The plaintiffs' motion is DENIED. Defendants' motion is ALLOWED.

II. Legal Standard

Summary judgment is appropriate when "'the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.'" Barbour v. Dynamics Research Corp., 63 F.3d 32, 36-37 (1st Cir. 1995) (quoting Fed.R.Civ.P. 56(c)). To succeed on a motion for summary judgment, "the moving party must show that there is an absence of evidence to support the nonmoving party's position." Rogers v. Fair, 902 F.2d 140, 143 (1st Cir. 1990); see also Celotex Corp. v. Catrett, 477 U.S. 317, 325, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986).

Once the moving party has made such a showing, the burden shifts to the non-moving party, who "'may not rest on mere allegations or denials of his pleading, but must set forth specific facts showing there is a genuine issue for trial.'" Barbour, 63 F.3d at 37 (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 256, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)). The non-moving party must establish that there is "sufficient evidence favoring [its position] for a jury to return a verdict [in its favor]. If the evidence is merely colorable or is not significantly probative, summary judgment may be granted." Anderson, 477 U.S. at 249-50, 106 S.Ct. 2505 (internal citations omitted). The Court must "view the facts in the light mostfavorable to the non-moving party, drawing all reasonable inferences in that party's favor." Barbour, 63 F.3d at 36 (citation omitted).

"Where, as here, a district court rules simultaneously on cross-motions for summary judgment, it must view each motion, separately, through this prism." Estate of Hevia v. Portrio Corp., 602 F.3d 34, 40 (1st Cir. 2010) (citing Blackie v. Maine, 75 F.3d 716, 721 (1st Cir. 1996) ("Barring special circumstances, the nisi prius court must consider each motion separately, drawing inferences against each movant in turn.")). III. Max Planck's Motion for Summary Judgment

A. The Priority Claim

The first legal issue raised by the plaintiffs is the propriety of the priority claim, in the Tuschl I '832 application, filed in March 2001, to the Tuschl II '325 European application, which was abandoned in 2001, two years before the Umass-Sirna Agreement in 2003. Alternatively, as defendants would state it, the issue is whether Whitehead acted in bad faith in refusing to remove that priority claim from Tuschl I when Max Planck demanded that it do so. Plaintiffs make two separate arguments with regard to the priority claim. They first argue that the Tuschl I application cannot properly claim priority to the '325 application, and that even Dr. Tuschl's original agreement to that priority claim does not make it proper. In thealternative, they argue that even if the original priority claim was valid, it can no longer be considered valid because Dr. Tuschl has withdrawn his consent. The contention is that because none of the Tuschl I inventors still pressing the priority claim are also Tuschl II inventors, Tuschl I no longer has a valid basis upon which to claim the priority date of the '325 application.

The first issue, whether the initial claim of priority was valid, turns on the proper interpretation of the law governing priority claims to foreign patent applications. Specifically, the statute states:

(a) An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO member country, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within twelve months from the earliest date on which such foreign application was filed; but no patent shall be granted on any application for patent for an invention which had been patented or described in a printed publication in any country more than one year before the date of the actual filing of the application in this country, or which had been in public use or on sale in this country more than one year prior to such filing.

35 U.S.C. § 119(a). Plaintiffs argue that, under this statutory language, any claim of priority that Tuschl I makes to the '325 application is improper.

Defendants, for their part, contend that the validity of the original priority claim is a matter not before this Court because it was not raised in the First Amended Complaint, and that the real question is whether Whitehead acted in bad faith, under the 2001 and 2003 Agreements, in refusing to remove the priority claim from the Tuschl I application at Max Planck's request in 2004. They argue that Whitehead's refusal to remove the priority claim from Tuschl I did not exhibit bad faith because Dr. Tuschl had assigned his rights to the Tuschl I invention partially to Whitehead, and under the 2001 and 2003 Joint Invention and Joint Marketing Agreements, Whitehead bore the responsibility of unilaterally managing the Tuschl I prosecution. Defendants argue that Whitehead therefore had no responsibility to remove the priority claim at Max Planck's request, and did not do so because UMass had already licensed its rights in Tuschl I to Sirna Therapeutics, which had relied on the existence of the priority claim in that licensing agreement.

In support of their argument that § 119(a) does not support the validity of the priority claim, plaintiffs cite Boston Scientific Scimed, Inc. v. Medtronic Vascular, Inc., 497 F.3d 1293 (Fed. Cir. 2007). In that case, an organization filed a European patent application for an invention, and then laterbecame affiliated with an American inventor. That inventor tried to claim priority to the European application, but the Federal Circuit ruled that, because the organization had not been acting on the American's behalf at the time the application was filed, the priority claim was improper under § 119(a). Specifically, the court held that "a foreign application may only form the basis for priority under section 119(a) if that application was filed by either the U.S. applicant himself, or by someone acting on his behalf at the time the foreign application was filed." Id. at 1297-98.

Here, plaintiffs argue, Max Planck filed the '325 application prior to its agreement with the Tuschl I inventors Drs. Zamore, Bartel and Sharp; Max Planck therefore could not have done so on behalf of those inventors, who thus have no claim of priority to the '325 application under Scimed, which states that "§ 119 gives rise to a right of priority that is personal to the United States applicant." Id. at 1297 (quoting Vogel v. Jones, 486 F.2d 1068, 1072 (CCPA 1973)). Defendants counter that Scimed held that § 119(a) "requires that a nexus exist between the inventor and the foreign applicant at the time the foreign application was filed, " id. at 1297, and that such a nexus clearly existed in this case, given that Max Planck filed the '325 application on Dr. Tuschl's behalf, and Dr. Tuschl was a Tuschl I inventor. This argument is persuasive.

The next issue is whether ...

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