CAFC refuses to second guess a district court determination on a motion for attorney fees under 285.

| April 13, 2017

University of Utah v. Max-Planck-Gesellschaft zur Foerderun der Wissenschaften E.V., et al.

March 23, 2017

Before O’Malley, Reyna and Wallach.  Precedential Opinion by Reyna, joined by O’Malley and Wallach


University of Utah (UUtah) sued Max-Planck et al. (Max-Planck) for correction of ownership for several of Max-Planck patents (the Tuschl II patents).  The district court granted Max-Planck’s motion for summary judgment but refused to grant its motion for attorney fees under 285.  The CAFC found that the district court did not abuse its discretion and affirmed the refusal to grant the 285 motion.


Prior to the Tuschl II invention being reduced to practice, Dr. Tuschl published an article describing their various discoveries in the field of RNAi.  Shortly thereafter, Dr. Bass, of UUtah, published a mini-review in Cell magazine that summarized the state of RNAi research, focusing on Dr. Tuschl’s article.  Additionally, Dr. Bass’ mini-review included a hypothesis that molecules that have a feature called “3’ overhangs,” which are certain double-stranded RNA (“dsRNA”) molecules with a nucleotide overhang on the 3’ ends of dsRNA may be responsible for the RNAi activity reported in Dr. Tuschl’s article.

Subsequently Dr. Tuschl relying on Dr. Bass’ mini-review hypothesis chemically synthesized candidate molecules with and without 3’ overhangs and tested for RNAi activity and determined that small synthetic dsRNA with 3’ overhangs (dubbed “siRNA”) can be more effective at inducing RNAi than dsRNAs without 3’ overhangs.  Max-Planck filed a patent application and cited Dr. Bass’ mini-review as prior art.   A family of patents, the “Tuschl II patents” issued from the patent application.

UUtah, on behalf of Dr. Bass, sued claiming that Dr. Bass should be named as either a sole or joint inventor of the Tuschl II patents.  The issue of sole inventorship was based on allegations that Dr. Bass reduced to practice the concept that molecules with 3’ overhangs would be integral to RNAi and the issue of joint inventorship was based on collaborative conversations between Dr. Bass and the DR. Tuschl at various academic conferences.

Max-Planck moved to dismiss, but the district court denied the motion finding that the pleaded facts were sufficient to state claims for sole and joint inventorship.

However, Dr. Bass’s deposition turned into a disaster.  She essentially admitted that she never reduced the Tuschl II invention to practice, that is, never tested siRNAs as agents.  Regarding collaboration, Dr. Bass and Dr. Tuschl met for dinner during a conference and discussed Dr. Tuschl’s research in relation to Dr. Bass’ hypothesis relating to the 3’ overhangs.

Based on the deposition, UUtah withdrew its claim for sole inventorship and subsequently the district court granted Max-Planck’s motion for summary judgment regarding joint inventorship.

Max-Planck filed a motion under 285 seeking eight million dollars in attorney fees essentially arguing that based on Dr. Bass’s deposition the claim for ownership lacked any meaningful basis.  The district court denied the motion disagreeing that the case was objectively unreasonable when all reasonable inferences were drawn in UUtah’s favor.

Regarding sole inventorship, “The district court agreed that UUtah’s sole inventorship argument had little factual support, but credited UUtah for withdrawing that argument prior to summary judgment.”

Regarding joint inventorship, “The district court also explained that, even though UUtah could not ultimately produce the evidence necessary to win, its inventorship claim was predicated on a valid interpretation of Kimberly-Clark Corp. v. Proctor & Gamble Distributing Co., 973 F.2d 911, 917 (Fed. Cir. 1992), which held that one inventor seeing a relevant report and building upon it might be an element of joint behavior supporting collaboration.  It is noted how relevant Dr. Bass’s mini review was to the patented subject matter.

Max-Planck appealed the denial of the 285 motion, but the CAFC found that there was no abuse of discretion by the district court and held “district courts have discretion to make exceptional case determination on a case-by-case basis, considering the totality of the circumstances.”  The CAFC also held

Rather than providing any set formula to dictate the district court’s consideration of this issue, Octane Fitness defines an exceptional case as one that “stands out from others with respect to the substantive strength of a party’s litigating position.” Id. at 1756 The district court explained why UUtah’s position did not stand out from other patent cases, and Octane Fitness does not require anything more.


The CAFC seems set on letting the district court deal with 285 motions.

Full Opinion

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