Max-Planck and U. Mass. filed dueling summary judgment motions in their ongoing spat over ownership of pending related (but differently owned) patent applications directed to RNA. The case is so heated it spun off a malpractice case regarding priority claims. Here, Max-Planck’s motion for partial summary judgment was denied while U. Mass.’ motion for partial summary judgment was granted. In addressing these motions Judge Saris ended up making new Massachusetts law regarding sovereign immunity and 93A.
Max-Planck moved for judgment that a priority claim in one of the disputed applications could not be proper for a variety of reasons including the inventors’ withdrawal of consent for the claim and question surrounding a different claim of priority to a European parent. Judge Saris ruled that the first point required resolution of disputed factual issues and the second point required a Markman type approach and “better briefing.” Judge Saris also denied Max-Planck’s motion for summary judgment on counterclaims requesting relief for Max-Planck’s petition to the USPTO to cancel the disputed priority claim. For breach of contract the court ruled that factual questions prevent judgment. For tortious interference the court ruled that potential future damages and requested equitable relief were sufficient for the claim to stand.
U. Mass. moved for summary judgment that it could not be subject to a claim under 93A due to sovereign immunity as an arm of the Commonwealth. In a detailed analysis of the statute and sovereign immunity, Judge Saris ruled that U. Mass. was not subject to suit under 93A and entered judgment in favor of U. Mass. Summary judgment was also granted on an unjust enrichment claim against U. Mass. which partially depended upon the interpretation of 35 U.S.C. §119(a) regarding priority claims. [This is generally one of the most involved §119 cases you’ll see.] The court found that there was no evidence U. Mass. had received any revenue for improperly licensing patent rights to which it was not entitled.
Max-Planck-Gesellshaft Zur Förderung Der Wissenchaften E.V. v. Whitehead Institute for Biomedical Research, 09-11116-PBS (D. Mass. Feb. 7, 2011)
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