Ali v. Carnegie Institution of Washington

684 F. App'x 985
CourtCourt of Appeals for the Federal Circuit
DecidedApril 12, 2017
Docket2016-2320
StatusUnpublished
Cited by16 cases

This text of 684 F. App'x 985 (Ali v. Carnegie Institution of Washington) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Ali v. Carnegie Institution of Washington, 684 F. App'x 985 (Fed. Cir. 2017).

Opinions

Opinion for the court filed PER CURIAM.

Concurring opinion filed by Circuit Judge Dyk.

Per Curiam.

This longstanding patent dispute began when Mussa Ali, proceeding pro se, filed a civil suit in the U.S. District Court for the [987]*987District of Oregon (Oregon court) against the Carnegie Institution of Washington (Carnegie) and the University of Massachusetts (UMass) (collectively, defendants), alleging that they erroneously omitted Mr. Ali as a co-inventor on a handful of patents that the defendants co-owned. Mr. Ali sought to be added as a co-inventor to the patents-in-suit, as well as monetary damages from UMass for this alleged omission. After-wards, the Oregon court dismissed UMass on the ground that it is entitled to sovereign- immunity under the Eleventh Amendment of the U.S. Constitution and sua sponte transferred the case to the U.S. District Court for the District of Columbia (DC court) because it lacked personal jurisdiction over Carnegie. The DC court then dismissed the case because UMass was a necessary party that could not be joined and ultimately entered judgment against Mr. Ali. Although we have liberally construed Mr. Ali’s appeal of various decisions rendered by the Oregon court and the DC court, we conclude that neither court erred in any respect, and we, therefore, affirm.

Background

U.S. Patent Nos. 6,506,559, 7,538,095, 7,560,438, 7,622,633, and 8,283,329 (patents-in-suit) are generally directed to methods of gene-specific inhibition through the use of double-stranded ribonucleic acid and are jointly owned by the defendants. Two of the named co-inventors of the claimed inventions, Dr. Andrew Fire of Carnegie and Dr. Craig C. Mello of UMass, received the Nobel Prize in Medicine in 2006 for these inventions. Mr. Ali alleges that he made a critical contribution to the claimed inventions of the patents-in-suit while he was employed in Dr. Mello’s laboratory at UMass and that Dr. Mello then shared Mr. Ali’s contribution with Dr. Fire. Mr. Ali attempted on many occasions to have the defendants add him as a co-inventor on the patents-in-suit, but they refused to do so. Their refusal led to this litigation. ■

Mr. Ali filed a complaint against Carnegie in the Oregon court, which he would later amend to join UMass as a co-defendant, seeking to become a named co-inventor to the patents-in-suit under 35 U.S.C. § 256 (2012) (inventorship claim), as well as to recover damages from UMass for any money derived from the patents-in-suit that he was entitled to as a co-inventor (damages claims). UMass then moved for dismissal of the case against it under Fed. R. Civ. P. (12)(b)(l), arguing that the Oregon court lacked subject matter jurisdiction because UMass has sovereign immunity as an “arm” of Massachusetts under the Eleventh Amendment. In light of this argument, the defendants jointly filed a motion for complete dismissal of the case pursuant to Fed. R. Civ. P. 12(b)(7), asserting that UMass was a necessary party that could not be joined in the case. Alternatively, they jointly moved for complete dismissal under Fed. R. Civ. P. 12(b)(2) as well, contending that the Oregon court lacked personal jurisdiction over them.1

The Oregon court concluded that the Eleventh Amendment provided UMass sovereign immunity from suit as it was essentially one and the same as Massachusetts and that UMass had not engaged in any conduct that suggested it waived this immunity. Thus, the Oregon court granted UMass’s Rule 12(b)(1) motion, dismissing it from the case. The Oregon court then considered whether it had personal jurisdiction over Carnegie, but deferred mak-[988]*988mg a decision so as to permit Mr. Ali to conduct limited jurisdictional discovery into any relationship between Carnegie and Oregon.

Mr. Ali sought reconsideration of the Oregon court’s dismissal decision. Mr. Ali contended that ÜMass waived its sovereign immunity when it accepted funds from the federal government under the University and Small Business Patent Procedures Act, 35 U.S.C. §§ 200-12 (2012), commonly known as the Bayh-Dole Act, in support of certain research that led to the issuance of the patents-in-suit because UMass’s receipt of federal funds was conditioned on the waiver of its sovereign immunity.2 The Oregon court rejected Mr. Ali’s contention, finding no provision in the Bayh-Dole Act that supported this theory of conditional receipt of funds.

For its part, Carnegie sought reconsideration of the Oregon court’s discovery order, and the Oregon court reversed course. It explained that even if it accepted Mr. Ali’s allegations concerning Carnegie’s research, educational, and licensing efforts directed at Oregon as true, they would not constitute the systematic and continuous contacts necessary to hold that the court had general personal jurisdiction over Carnegie. Moreover, because Mr. Ali’s lawsuit was unrelated to any such alleged efforts, the Oregon court held that it could not exert specific personal jurisdiction over Carnegie in this particular dispute. The Oregon court then sua sponte transferred the case to Washington, D.C. And in doing so, it declined to address the then-pending Rule 12(b)(7) motion.

Upon transfer to the DC court, the court resolved the Rule 12(b)(7) motion and considered three variables in evaluating whether to dismiss the action due to the absence of UMass as a party:

(1) [Wlhether the absent party is “required” for the litigation according to the factors enumerated in [Fed. R. Civ. P. 19(a)]; (2) whether the required party can be joined; and (3) if joinder is not feasible, whether the action can nevertheless proceeding in “equity and good conscience” under [the factors identified in Fed. R. Civ. P. 19(b)].

J.A. at 46 (first citing OAO Healthcare Solutions, Inc. v. Nat’l Alliance of Postal & Fed. Emps., 394 F.Supp.2d 16, 19 (D.D.C. 2005); and then citing Kickapoo Tribe of Indians of Kickapoo Reservation in Kan. v. Babbitt, 43 F.3d 1491, 1494 (D.C. Cir. 1995)). The DC court further explained that under the first variable,

[A] party is to be joined if feasible if (1) the court cannot accord complete relief among existing parties; (2) the party’s absence may, as a practical matter, impair or impede that party’s ability to protect its interest; or (3) the party’s absence may subject the existing parties to substantial risk of incurring multiple or otherwise inconsistent obligations.

Id. at 46-47 (citing Fed. R. Civ. P. 19(a)(1)). The DC court also identified the following factors for consideration under the third variable:

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684 F. App'x 985, Counsel Stack Legal Research, https://law.counselstack.com/opinion/ali-v-carnegie-institution-of-washington-cafc-2017.