University of Utah v. Max-Planck-Gesellschaft, No. 16-1336 (Fed. Cir. 2017)Annotate this Case
The Tuschl patents relate to RNA interference, a process for “silencing” genes from expressing the proteins they encode, which may be useful in treating various diseases. In 2000, before the invention was reduced to practice, Dr. Tuschl published an article describing the discoveries. Weeks later, Dr. Bass published a mini-review that focused on Tuschl’s article and included her own hypotheses about enzymatic processes that may be responsible for the RNAi activity reported in Tuschl’s article. Tuschl read Bass’ article and recognized and successfully tested her hypothesis. Bass’ mini-review was cited as prior art during prosecution of the Tuschl patents, each of which issued. Bass sued for correction of ownership, claiming that Bass should be named as either a sole or joint inventor of the patents. During depositions, Bass made admissions undermining allegations that Bass reduced the Tuschl invention to practice and that Bass collaborated with the inventors. On the eve of the deadline for dispositive motions, Bass withdrew the sole inventorship claims, but not the joint inventorship claim. The district court rejected the joint inventorship claims on summary judgment, finding no evidence of collaboration between Bass and the Tuschl inventors. The district court declined a request for eight million dollars in attorney fees under 35 U.S.C. 285, The Federal Circuit affirmed, finding that the case was not objectively unreasonable when all reasonable inferences were drawn in Bass's favor.